My Size Pty Ltd v Sara Lee Corporation and Saramar Corporation

[1998] ATMO 17

TRADE MARKS ACT 1955

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

Re:      Opposition by SARA LEE CORPORATION and SARAMAR       CORPORATION to the registration of trade mark application number 554688         in the name of MY SIZE PTY LTD

As provided for in the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, any reference to the Act in this decision is a reference to the Trade Marks Act 1955.

Application number 554688 was lodged on 29 April 1991 in the name of My Size Pty Ltd , (the applicant), seeking registration of the trade mark as shown:
  
in respect of “clothing, hosiery and lingerie”.  Its acceptance in Part B of the Register was advertised in the Australian Official Journal of Trade Marks of 6 January 1994, with the following endorsement: “Registration gives no right to the exclusive use of the word SIZE”.

On 6 July 1994, notices of opposition to registration of the mark were lodged by Sara Lee Corporation and Saramar Corporation, (together, the opponents).  The grounds of opposition, which are identical in both notices of opposition, are various but at the hearing the opponents mainly focussed on grounds based on the claims that the applicant’s mark is not adapted to distinguish, nor is capable of distinguishing the applicant’s goods (sections 25 and 26); that the registration of the opposed mark would be prejudicial to the legitimate interests of the opponents and that the opponents would be aggrieved thereby; that the applicant has not discharged its onus to show it is entitled to registration of the subject mark; that registration of the applicant’s mark ought to be refused in the exercise of the Registrar’s discretion, by reason of the conduct of the applicant and/or the nature of the mark and/or its use.

The opponents lodged and served all the evidence in support by 21 April 1995.  Subsequently, the applicant completed lodging and serving of its evidence in answer on 20 November 1995.  No evidence in reply was lodged.

The opposition matter was heard in Canberra on 12 February 1998.  Ms Marion Heathcote of Davies Collision Cave, patent and trade mark attorneys of Sydney, appeared on behalf of the opponents.  The applicant was represented by Mr Brett Connor of Carter Smith & Beadle, patent and trade mark attorneys of Melbourne.

Evidence
In these proceedings, the same evidence relates to both oppositions, by Sara Lee Corporation and Saramar Corporation. 

The evidence in support comprises one statutory declaration by Ian Alexander Moffatt, dated 7 April 1995, with exhibit IAM1.  Mr Moffatt is Group Counsel Australia of Sara Lee Holdings (Australia) Pty Limited, which is a subsidiary of Sara Lee Corporation.  He has held that position since 1992.  He refers to two trade marks containing the words MY SIZE of applications in respect of all the goods in class 25, lodged by Saramar Corporation, which were assigned to Sara Lee Corporation, an application to record the assignment of the marks having been lodged at the Trade Marks Office on or about 29 March 1994.  He also refers to two other applications for similar marks, in respect of all goods in class 25, lodged in the name of Sara Lee Corporation.  Two lists detailing overseas registrations or applications of trade marks which include the words MY SIZE, in the names of either Sara Lee Corporation or Saramar Corporation, are included in his declaration.

The evidence in answer consists of the following:

• statutory declaration by Barry Simon Levy, dated 21 April 1995, with exhibit BSL1

• statutory declaration by Jeffrey Ronald Andrews, dated 21 April 1995, with exhibit JRA1

• statutory declaration by Gordon Bruce Smith, dated 16 October 1995, with exhibit GBS1

• statutory declaration by Andrew David Nissen, dated 21 April 1995, together with exhibits ADN1 to ADN14.

The three declarants, Messrs Levy, Andrews and Smith, are directors of companies that manufacture and supply clothing to retailers, particularly for women, throughout Australia.  All three of them state, inter alia, that, if they were to see ladies’ clothing bearing the mark HANES JUST MY SIZE, they would consider it possible or likely that the product had some connection with the applicant’s mark MY SIZE.  

Mr Nissen has been a director of the applicant’s company since it was founded in 1981.  He says the trade mark MY SIZE has been used extensively since 1981 in relation to clothing, in particular, ladies’ clothing and as a retail service mark.  To support use of the mark, he provides details of value of the goods sold under the mark and amounts expended on advertising.  He states further that the applicant’s catalogues, which also contain goods supplied by other manufacturers and marketed under trade marks belonging to those manufacturers, are circulated throughout Australia four times per year and lists the numbers of the catalogues distributed in each state and territory.  Copies of some of these catalogues, as well as samples of advertisements in newspapers and magazines, are exhibited to his declaration. 

Submissions
At the outset, Ms Heathcote explained that the reason for lodging two notices of opposition was largely because an assignment had been entered in respect of trade mark applications lodged by Saramar Corporation to Sara Lee Corporation, which could not be recorded under the provisions of Trade Marks Act 1955 until after registration of the marks.   It was considered desirable therefore to proceed with the opposition in the name of both parties.  The opponents proposed to deal with the matter as one opposition, to which Mr Connor raised no objection. 

Ms Heathcote then referred to Mr Moffatt’s declaration, particularly the large number of the opponents’ applications and registrations of trade marks which include the words MY SIZE.  The purpose of detailing the extent of these trade marks, she said, was to indicate that other traders would seek to use those words and, in fact, had done so on local as well as world-wide basis. 

Turning to the declarations by Messrs Levy, Andrews and Smith, she commented on the commonality in expression between the three persons, which, she said, implied a single draftsman and a direction to which the declarations were leading.  Three declarations, in her opinion, were a somewhat limited number and, in any event, the statements in those declarations did not, in any way, support distinctiveness of the applicant’s trade mark MY SIZE. 

Discussing the declaration of Mr Nissen, Ms Heathcote first submitted that the applicant did not appear to clearly differentiate between use of the mark on goods, its use as a retail service mark, or even use of it as a company name.  To illustrate this point she referred to and discussed sections of a number of pages in the catalogues of Mr Nissen’s declaration, saying that it was not clear how the words MY SIZE were used, because there was a suggestion that the words were used as the retail service mark as well as in relation to the applicant’s products.  She said that, even in Mr Nissen’s declaration, he conceded that there was some blurring in that regard.  It was therefore unclear what proportion of the sales figures given could be attributable to MY SIZE, as used in relation to the goods, and those in relation to retail services.  This also applied to Mr Nissen’s references to advertising.  In her view, judging from the catalogues, there was more emphasis on the retail aspect than sales of the goods.  It was difficult therefore to draw any definitive conclusion as to what reputation the subject trade mark was supposed to have achieved.  Furthermore, Ms Heathcote said, Mr Nissen had ascribed use of the mark to clothing, whereas the present application covered a broader range of goods for which no evidence of use had been presented.  

In response to the above matters raised by Ms Heathcote, Mr Connor submitted that the lack of distinction between use of the words MY SIZE as a service mark and in relation to clothing was not the question to be decided here.  The issue was whether the applicant had an association with clothing and therefore whether the applicant’s use can be considered use in respect of clothing.  The applicant had in no way attempted to deceive or mislead in Mr Nissen’s declaration by trying to blur this distinction.  It had attempted to show that its mark had an association in the clothing industry and that it labelled its goods with the mark MY SIZE.  There was no doubt as to whether or not the evidence showed use of the mark in respect of clothing. 

In regard to the comments concerning use of the mark only on a narrow range of goods, Mr Connor pointed out that the lodging of the application had been based on use of the mark and an intention to use it.  It would be fair to say that the applicant had demonstrated use of the mark on clothing and indicated an intention to use it on hosiery and lingerie.  As at this stage, the applicant had not obtained registration, there was no onus on the applicant to provide evidence to the effect that the mark had been used on all of the goods claimed in the application.   

Turning to the submissions on distinctiveness of the applicant’s mark, Ms Heathcote said that the relevant law on sections 25 and 26 of the Act was clearly set out in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, Burger King Corp v Registrar of Trade Marks (1973) 128 CLR 417 and Seven-Up Co v Bubble Up Co Inc (1987) 9 IPR 259. In light of the tests outlined in these cases and having observed the mark’s simple type script which lacked any distinctive elements, she concluded that the applicant’s mark fell in the category of marks that are not at all inherently adapted to distinguish the goods specified in the application and therefore cannot be registered in Part B. In this regard, she said that inherent adaptability cannot be acquired and depended on the nature of the mark itself, hence, in the first instance, she would disregard the applicant’s evidence, noting the applicant’s comments regarding future use of the mark.

In developing her argument, Ms Heathcote submitted that other traders would need to use the words MY SIZE because of the very nature of those words.  In dealing with clothing of the kind belonging in class 25, the key requirement for such goods was that they should be of the appropriate dimensions and proportions suitable for whoever the consumer may be.  When purchasing articles of clothing one of the essential questions always asked was: “Is this my size?”.  That was a phrase, she said, used commonly every day by consumers and people seeking items that are in the proportions suitable to them.  In using those words in that sense, no arbitrary meaning was applied; rather it was normal usage, forming part of the every-day language. 

In applying the traditional definition to ascertain whether words are inherently adapted to distinguish as per Re American Screw Co’s Appn (1959) RPC 344, where aptness for normal description is considered to be equivalent to direct reference, Ms Heathcote said that it was apt to talk about clothing as “in my size”. This proposition was further reinforced by the dicta in Mark Foys v Davies Coop & Co Ltd (1956) 95 CLR 191, which relies on the test on how the ordinary persons would see the words when applied to the goods in question. Discussing further the criteria outlined in that case by Dixon and Williams JJ, Ms Heathcote said that the words MY SIZE did convey some definite meaning and had a direct relationship with clothing. There could be no other assumption when one was referring to those words in relation to clothing articles than that they were meant to have a direct reference to their applicability to the consumer. In contrast to the observations in relation to the mark there - TUB HAPPY - Ms Heathcote said that the expression MY SIZE did not convey merely a cloudy suggestion, it was not a covert and skilful allusion to the goods, but that it comprised words that trespassed upon the right of other traders to use any ordinary English words or phrases referring to their goods.

Ms Heathcote directed my attention to Wella Aktiengesellschaft v Registrar of Trade Marks 33 IPR 374, where Lehane J said that, unlike the words TUB HAPPY, PERFECTLY YOU “is a phrase which has some currency in ordinary usage and in some contexts has an accepted meaning”. She submitted that MY SIZE was also a phrase that had some currency in ordinary usage and, in the present context, had an accepted meaning which any ordinary person would know. Whereas Lehane J had found that the words PERFECTLY YOU had been taken out of the context, MY SIZE had not, she said. The link was obvious between the goods and the consumers. She reminded me that a mark must be looked at not in its strict grammatical significance, as directed in Keystone Knitting Mills Ltd’s Application (1928) 45 RPC 421, asserting that, while the traders might suggest the items are appropriate to the consumer, if one were to take out the strict grammatical context, the association was quite clearly in the words, i.e. something that was suitable to them - “it is my size”. In this regard, Ms Heathcote said, she considered that MY SIZE clearly fell within that category of trade marks which are so inherently lacking in distinctiveness that these marks do not qualify for any form of registration, e.g.: CHARM, HEAVENLY, MUST, ALL THE COLOURS OF THE WORLD, DEEP BLUE, KNOCKOUT and TRUE BLUE. She said she would go so far as to conclude that the applicant’s mark was utterly devoid of inherent adaptation to distinguish one trader’s goods from another trader’s within the meaning of the phrase NO SMOKING, which had been refused registration as a trade mark - Re No Smoking Di Mainardi Palmiro (1987) 90-439. 

Ms Heathcote requested that I, as the delegate of the Registrar, exercise my discretion, pointing out the long standing authority that the onus was on the applicant to show that its mark is capable of becoming distinctive, and that in doubtful cases the public interest required that registration of the mark be refused.  Given the lack of any level of inherent adaptability to distinguish because of the mark’s descriptive nature, the requirement of traders to use appropriate words legitimately in their trade, the limitations of the applicant’s evidence and the ordinary Roman script representation of the words MY SIZE, she submitted it was in the Registrar’s discretion to refuse registration of the mark on public policy grounds, or, at the very least, to restrict the trade mark to those few goods upon which use can be evidenced.

The opponent sought costs in the matter.

In response to the mark’s distinctiveness aspect, Mr Connor submitted that, for the tests to be applied in determining whether a mark was inherently adapted to distinguish, it was not necessary to go beyond the ratio that has been handed down in such cases as Burger King v The Registrar, supra, F H Faulding & Sons Ltd v The Imperial Chemical Industries of Australia and New Zealand Limited (1965) 112 CLR 537, Mark Foys v Davies Coop, supra, Clark Equipment v The Registrar, supra, and Seven Up v Bubble Up, also supra.  In light of what has been set down in those cases on inherent adaptability to distinguish and the test of “aptness for normal description”, in the words of Lloyd-Jacob J in American Screw Co’s case, supra, it was the applicant’s submission that a rival trader would not ordinarily refer to its goods as MY SIZE, or wish to use these words without improper motive, since these words did not directly describe any character or quality of the goods.  While the expression may have another clear meaning in a slightly different context in regard to clothing, it was not apt for directly conveying the impression of a character such as correctly fitting clothes, or any other impression these words may suggest.  A rival trader, Mr Connor said, would be more likely to use words such as “your size” which would be in accordance with the recent decision concerning the mark PERFECTLY YOU.  While the applicant was in agreement with the opponents on the particular meaning of the word “size”, the words MY SIZE had a slightly different context.  He said the marks should not be dissected, but considered as a whole and looked at in the proper context.  Here, it was more a suggested response which a purchaser would pose to himself or herself when purchasing clothes and it was intended perhaps to convey a suggestion of correctly fitting clothing.  Mr Connor said there was a slight distinction there; it was more of a suggestion which the purchaser would consider.  It would be inconceivable to believe that a purchaser would expect a clothing label marked with the words MY SIZE to be of a correct fitting without having to go through the usual pre-purchase checking by looking at the actual size markings, or trying on the goods.  It was possible, he said, that the mark did convey the impression, particularly in the market place in which the applicant operates, of goods which are of a particular style or fitting to give the appearance of an article of clothing which fits properly .  Hence, the mark was, at best, a skilful allusion to the character of the goods and was, in fact, inherently adapted to distinguish as were marks such as TUB HAPPY.  For those reasons, he said, the mark MY SIZE fulfilled the criteria of being capable of becoming distinctive.  It was not a question of whether the applicant was confused in its distinction between the use of the service mark and the use of the words as a trade mark, but whether there was a direct association with clothing and whether the mark can be considered to be use on clothing.  He directed my attention to the applicant’s evidence of use of the mark in Mr Nissen’s declaration and exhibits, pointing to the high sales value, duration of use and circulation figures of the catalogues, which illustrate the mark MY SIZE and the goods with the MY SIZE label.  The catalogues, he said, had been distributed throughout Australia since first use of the mark in 1981.

In relation to the opponents’ further comments on the mark’s use, Mr Connor said that the evidence supported the applicant’s view that the mark was capable of becoming distinctive, and that it was not necessary for the applicant to demonstrate use of the mark on all of the goods as stated on the application.  If I were to reach a decision that the mark was capable of becoming distinctive, then it was a matter of allowing the mark to be registered in respect of all the goods of the present application.  The question of restricting the goods would only arise if the mark had very little capacity to distinguish.  

Concerning the opponents’ submissions on the availability of the words MY SIZE for normal use by other proprietors, Mr Connor said he agreed with that assertion, but he believed that the words would not be required for describing the nature of other traders’ goods, rather the words would be needed more in line for a trade mark label in order to distinguish their goods from others.  Referring to the opponents’ various registrations or pending applications,  Mr Connor argued that the fact that the opponents have applied to register or have registrations of marks for the words JUST MY SIZE separately and in combination with the word HANES, indicated that the words were sought for use by other traders as trade marks.  

Discussion
As the applicant’s mark has been accepted in Part B of the Register, I must consider its registrability in terms of section 25 of the Act, the relevant sub-section being:

1. A trade mark is registrable in Part B of the Register if it is distinctive, or is not distinctive but is capable of becoming distinctive, of goods or services in respect of which registration of the trade mark is sought and with which the application for registration is or may be connected in the course of trade.

For a trade mark to be registrable as one “capable of becoming distinctive”, it must be determined whether it will, at some time in the future, meet the requirements of sub-section 26(2), namely, by inherent distinctiveness or by a combination of inherent adaptability to distinguish and distinctiveness in fact.  In Burger King v The Registrar, supra, the criteria in this regard were expressed by Gibbs J., at 424, as:

“... 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 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 the matters; the inquiry becomes whether the trade mark is capable in fact of distinguishing the goods, by reason of future use of 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.”

As was submitted by both parties in these proceedings, the question as to whether or not a mark is adapted to distinguish depends upon whether the mark is of such nature that other traders would require to use it, without improper motive, upon or in connection with their goods.  If so, then registration of the mark will generally be denied - Clark Equipment v Registrar, supra.

It has not been disputed by either the applicant or the opponents that the meaning of the word “size”, when adopted in the context of clothing, is well recognized, readily understood and in common use.  The Macquarie Dictionary, third edition, defines the word, inter alia, as: “1. the dimensions, proportions, or magnitude of anything; 3. one of a series of graduated measures for articles of manufacture or trade”.  Similar definitions appear in the Webster’s Third New International Dictionary, i.e. “3a (1): physical magnitude, extent, or bulk: the actual characteristic, normal, or relative proportion of a thing: relative or proportionate dimensions; 4a: one of a series of graduated measures esp. of manufactured articles (as of clothing) conventially identified by numbers or letters each representing a particular dimension or set of dimensions”.  Having regard to its pertinent meaning when used in association with items of clothing, the applicant has acknowledged that it cannot appropriate the word “size” for its own exclusive use by consenting to a disclaimer of the word, as a condition or registration.  This is embraced in the endorsement entered on the application prior to acceptance of the applicant’s mark.    

As enunciated by Dixon CJ in Mark Foy’s v Davies Coop case, supra, at 195, and noted by both Ms Heathcote and Mr Connor, to determine whether a word has a direct reference to the character or quality of the goods, one must consider the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.  Having regard to the obvious connotation of the word “size”, when conjoined with the possessive form “my”, the combination of those words expresses the meaning that the garments, in relation to which the mark appears, would be of a particular style or measurement that suits the person who is seeking to purchase a certain item of clothing.  There is therefore no doubt that the words MY SIZE do convey some meaning to the prospective purchaser about the goods in question.  As indicated by Mr Connor, having regard to the varied proportions and dimensions of human beings, however, it is impossible to imagine that those purchasers would expect the garment to be in his or her exact fitting without having to inspect first the size identification usually marked on or under the label of a garment or, as would be practice in most instances, to try on the particular article of clothing to ascertain the correct fitting.  On inspecting and selecting a garment, purchasers may wonder whether it would suit them, by posing the question to themselves or the shop assistant: “Is this my size?”  Possibly, on seeing the expression MY SIZE on clothing, a purchaser would be led to believe that the clothing made and offered by the manufacturer ought to be within the range of size that suits his or her particular measurements, but it does not say anything really tangible about the goods.  Indeed, the applicant’s evidence on advertising shows that most of the various articles of clothing are suitable for ladies whose sizes fall between numbers 14 and 26.  These are the locally accepted and recognizable measures of ladies’ clothing and therefore, customers whose body proportions are within these sizes would probably expect to find garments bearing the mark which fit their respective sizes.  Thus, in my estimation, the words MY SIZE convey more of a suggestion to the consumer that the items of clothing available are in their appropriate sizes; they are words that attract a person’s attention, interest and response.  In Mark Foy’s v Davies Coop, Dixon J has encapsulated the character and purpose of marks similar to MY SIZE , at 194:

A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude.  This is true of much advertising, which common experience shows to be full of meaningless but emotive expressions supposedly capable of inducing a generally favourable inclination in the almost subconscious thought of the passing auditor or hasty reader.

For the aforementioned reasons, I do not think the phrase MY SIZE would be sought by other manufacturers for describing the same or similar goods unless their motives for such a choice were suspect.  I note the opponents’ emphatic arguments that the words MY SIZE would not only be needed by others but were already used in Australia and overseas.  With the exception of the opponents’ own marks, where the words are incorporated in the phrase JUST MY SIZE, no other evidence has been produced to show the words to be in common use by other proprietors.  I am in agreement with the applicant that, in the present context, a more appropriate expression for describing clothing as being of a correct size and one which other traders are more likely to adopt would be “Your size”, or “This is your size”.

As stated by Bowen CJ, Woodward and Lockhart JJ, in Advanced Hair Studio (America) Pty Ltd v Registrar of Trade Marks (1988) 12 IPR 1, at 6:

It is a question of degree in every case whether a mark trespasses across the line between an indirect and direct reference to character or quality, as the division of opinion in Mark Foy’s Ltd v. Davies Coop & Co. Ltd (1956) 95 C.L.R. 190 (the Tub Happy Case) illustrates.  That case involved the term “happy” which the majority felt to be such a vague and emotive word, containing merely a “cloudy suggestion” of meaning rather than a “definite or actual” meaning, as to deprive “tub happy” of any direct reference.  

Even though, in the present case, the term MY SIZE may not be an indirect description to the same degree so as to be held merely emotive or containing a “cloudy suggestion”, as was found in respect of the expression TUB HAPPY for articles of clothing, nevertheless, I consider the words MY SIZE, also used in connection with clothing, to have a sufficient degree of adaptability to distinguish so as not to fall too far short of being prima facie distinctive of the applicant’s goods. 

If I am wrong in my assessment of the applicant’s mark, then its past use, which commenced in 1981 and has been estimated to amount to over $33 million up to June 1994, for sales of the goods and the provision of services in relation to those goods under the mark and approximately $1 million of advertising expenditure as well as the wide circulation of the applicant’s catalogues illustrating the mark, as evidenced by Mr Nissen’s declaration, together satisfy me that the applicant has discharged its burden in establishing that the mark qualifies for registration as one which is capable of becoming distinctive. 

The opponents have pointed out that, according to Mr Nissen’s evidence, this use of the mark has not extended to all of the goods specified in the application, but only to “clothing, in particular, ladies’ clothing including jackets, shirts, coats, knitwear, tracksuits, pants, vests, skirts and dresses”.  To this the applicant has responded by referring to its intention to use the mark in respect of the other nominated goods.

The time within which the applicant should realize its intention to use a mark after lodging an application for registration has not been defined in legislation.  Fullager J, in Aston v Harlee Manufacturing Co (1960) 103 CLR, said, at 401:

I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.  Again, I do not think that “intention” in this connexion ought to be regarded as meaning an intention to use immediately or within any limited time.

Given that the information concerning the mark’s use in Mr Nissen’s declaration covers the period up to the middle of 1994, this means that no use of the mark had occurred on all the applicant’s goods for just over three years since lodgment of the subject application.  Having regard to the opponents’ responsibility to show absence of the applicant’s intention in this regard, as well as his Honour’s view that there is no requirement of immediate use of the mark or even use within a definite period, in the event of my finding that the mark was suitable for registration only on provision of the evidence of use, I would have no reason to exercise discretion in directing that the goods be restricted only to those in respect of which the applicant has demonstrated use. 

Conclusion
I have found that the opponent has failed on the grounds relied upon at the hearing.  I therefore dismiss the opposition in total and direct, subject to any appeal of this decision, that the application should proceed to registration in Part B of the Register with the existing endorsement as to the disclaimer of the word “size”.

The applicant, having been successful in these proceedings, is entitled to costs and I so award them.

Vija Zars
Hearing Officer
29 April 1998