Ocean Spray Cranberries, Inc

[1999] ATMO 83

TRADE MARKS ACT 1995

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

Re:Application 753694 by Ocean Spray Cranberries, Inc.

Background
On 28 Jan 1998, Ocean Spray Cranberries Inc., (the applicant) applied to register the trade mark CRANBERRY CLASSIC in Class 32 in respect of "fruit juices, fruit drinks and soft drinks".

On 13 May 1998, an examiner of trade marks reported on the application, noting grounds for rejection of application under the Trade Marks Act 1995 in terms of both sections 41 and 44.  The grounds under section 44 initially related to three trade marks with earlier priority dates.  Subsequently, the grounds relating to one of these trade marks was reviewed and the grounds relating to 578142 and 635058 were maintained.  Details of these registrations with earlier priority dates than that of this application are:

Number  578142
Priority date               11 June1992

Endorsements:            Registration gives no right to the exclusive use of the word CLASSIC and the letter C.

.Registration is limited to the state of Queensland.

.Accepted on provision of evidence of use.

.The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.

Specification:             Fruit juices

Trade Mark:               

Number  635058
Priority date               14/07/1994

Endorsements             When the mark is used for items in the specification of goods other than BITTER and COLD FILTERED products, the words BITTER and COLD FILTERED in the trade mark will be changed to accord with those other items.

Specification:              Beer; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

Trade Mark:               

The grounds under section 41 of the Trade Marks Act 1995 were stated by the examiner in the following terms:  Your trade mark is not capable of distinguishing your goods from the goods […] of other traders because it consists of the words CRANBERRY CLASSIC.  Other traders who make cranberry juices and cranberry drinks are likely to want to use the word CLASSIC in connection with those juices to indicate that they too are of first class quality.  Your trade mark is one which other traders are likely to need to use in connection with their similar goods.

The applicant submitted evidence of the use of the trade mark, and submissions in rebuttal, whereafter the examiner maintained that the grounds of rejection remained, stating: although the trade mark has been in use for some years, and sales and promotional figures in Australia and in New Zealand are impressive, all evidence shows the trade mark appearing in conjunction with the applicant's registered trade mark OCEAN SPRAY.  The words CRANBERRY CLASSIC are simply descriptive of the juice in the bottle and there is no evidence that they act as a trade mark solus.

Subsequently, the applicant requested to be heard.  The hearing was before me, as delegate of the Registrar of Trade Marks, in Sydney. The applicant was represented by Mr James Maxwell of Peter Maxwell and Associates, Patent and Trade Mark Attorneys of Sydney.

Since much of Mr Maxwell's submission relates to the evidence, it is convenient to give an outline of the applicant's evidence prior to detailing the applicant's argument.

The evidence.
The evidence comprises two statutory declarations by Raymond Brian Quinlan, who is managing director of Ocean Spray International Services (Australia) Pty Limited.  The first declaration (Quinlan 1) is dated 24 December 1998 and the second declaration, (Quinlan 2), given to me at the hearing, is dated 12 July 1999.

In his first declaration Mr Quinlan gives an outline of the applicant's history in Australia, then goes on to give the history of the trade mark's use.  He states that the trade mark CRANBERRY CLASSIC was first used in promotional material presented to trade customers in March 1995 and was subsequently first used on drink bottles in August 1995 when the first sales occurred.

In successive years since that date, promotional expenditure by the applicant on goods sold under the trade mark is stated to have risen from approximately one million dollars through to well over two million dollars per year up to August 1998, just prior to lodgement of the application.  An annex appended to the Quinlan 1 declaration shows, somewhat strangely, sales figures appear to only slightly exceed advertising and promotional expenditure.  This might be explained by heavy promotion involved in putting a product onto the Australian market or by the promotion figures actually relating to all goods sold by the applicant.

Also appended to the Quinlan 1 declaration are examples of the various advertising and promotional materials that the applicant has produced which feature the trade mark.  Some of these materials show the trade mark in use.  Several sheets or advertisements should be mentioned here.  One appears to be a fold-out flier bearing the OCEAN SPRAY logo and the words TASTE GUIDE which features the range of the fruit juices produced by the applicant and recipes for alcoholic and non-alcoholic cocktail drinks into which they can be incorporated.  Various pictures of the fruit that comprise the juices are shown under the headings RASPBERRY CRANBERRY, CRANBERRY BLACKCURRANT, CRANBERRY APPLE, RUBY RED GRAPEFRUIT, PINK GRAPEFRUIT and CRANBERRY CLASSIC.

Other sheets incorporate pictures of the range of the applicant's fruit juices in glass bottles which are arranged side-by-side.  The label on each bottle has the applicant's OCEAN SPRAY logo, reproduced below, partially imposed over an oblique panel.  The panel on each bottle contains the words RUBY RED GRAPEFRUIT, CRANBERRY APPLE, CRANBERRY CLASSIC, CRANBERRY BLACKCURRANT or PINK GRAPEFUIT.

The Quinlan 2 declaration relates in the main to sales and promotional data after the application was filed.  It outlines promotional activities performed in relation to goods sold under the CRANBERRY CLASSIC trade mark, including promotion of suggested therapeutic properties of the goods.

The submissions
Mr Maxwell opened his submissions by outlining the history of the application. He then turned to section 33(1) of the Trade Marks Act 1995 which provides for a presumption of registrability of trade marks.  Mr Maxwell drew my attention to the provisions and structure of section 41 and the decision of Justice Branson in Blount Inc v The Registrar of Trade Marks 40 IPR 498 (the Oregon case).  The trade mark, Mr Maxwell submitted, falls into that category of trade marks identified by Branson J as invoking the provisions of subsections 41(5)(a), (b) and (c), that is, that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty on that basis alone that the trade mark is actually capable of distinguishing the designated goods or services.

Mr Maxwell next made submissions in relation to the tests within Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 and FH Faulding & Son Limited v Imperial Chemical Industries of Australia (1965) 112 CLR 537. The combination of words within the trade mark is, the attorney submits, a cleverly coined combination with a degree of alliteration. Mr Maxwell submitted that there are other terms that traders can use to describe their similar cranberry juices and that other traders would not legitimately want to use the words CRANBERRY CLASSIC which is an invented, distinctive combination coined by the applicant.

Next Mr Maxwell turned to a discussion of the evidence of use of the trade mark which, he says, is considerable  - being well over $7 million since the trade mark was first used in Australia in 1995.  He drew my attention to the fact the goods bearing the trade mark have been distributed through major retailers throughout Australia, such as Coles', Woolworths' and Franklins' supermarkets.  The attorney emphasised the heavy expenditure on advertising via television, trade promotions, instore demonstrations and print advertising.

Mr Maxwell turned to the 'other circumstances' provisions of subsection 41(5) and drew my attention to both the state of the Register and to registrations of the trade mark acquired by the applicant in overseas countries.

Mr Maxwell made submissions addressing the registrability of the trade mark in terms of subsection 41(6) of the Trade Marks Act 1995. He said that I could take into account the 'other circumstances', to which he had previously referred, as well as the significant sales and advertising undertaken by the applicant in relation to the trade mark. He submitted that there are numerous other trade marks on the Register that incorporate the word CLASSIC - thus the word must be at least capable of possessing some form of inherent adaptability to distinguish goods. This inherent adaptability, along with the acquired distinctiveness attested in the Quinlan declarations establish that the trade mark is capable of distinguishing the applicant's goods from those of other traders.

Finally, Mr Maxwell made submissions couched at the grounds for rejection under section 44 of the Act.  I will not discuss these to any great extent, since, while I do not agree with the thrust of his submissions, I do believe that these grounds of rejection should be withdrawn for the reasons I set out below.  Mr Maxwell did, however, make submissions in terms of section 44(3) which I will comment on, below.  He submitted that in terms of section 44(3), the applicant had not noted any use of the cited trade marks and no instances of confusion had been reported.

Reasons
Section 44
Insofar as it is relevant to this issue, section 44 of the Act allows:

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.

Given that the cited trade marks and the trade mark CRANBERRY CLASSIC are not substantially identical, that the goods are similar and that the priority dates of the citations are earlier than that of this application, what I am to decide is whether the trade marks in question are deceptively similar.

In the comparison of these trade marks, the matters which have to be taken into consideration were stated by Lord Parker (then Parker J) in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777), where he 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. If, considering all those circumstances, you come to the conclusion that there will be a confusion — that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods — then you may refuse the registration, or, rather, you must refuse the registration in that case.

I consider that, in comparing these trade marks, one of the surrounding circumstances to which I should pay attention is the inherent distinctiveness of the shared element (the word CLASSIC) in relation to the similar goods.  It is this shared element that has given rise to the ground of rejection relied on by the examiner.  If the shared element has a high degree of inherent distinctiveness, it is more likely to be seen, and remembered, by the public as denoting a common trade source of the similar goods when considered in the light of the notional user test propounded in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101:

Assuming use by the opponent of any of its marks in a normal and fair manner for any of the goods covered by the registrations of those marks (and including particularly goods also covered by the proposed registration of the mark applied for), is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration also uses the mark applied for normally and fairly in respect of any goods covered by its proposed registration?

However, if the shared element has a very low inherent distinctiveness, it is much less likely to be seen by the public as denoting a common trade source of the similar goods when considered in the light of the notional user test, supra.

The word CLASSIC is defined in the Oxford Dictionary as denoting, inter alia:

1. Of the first class, of the highest rank or importance; approved as a model;    standard, leading.

6. a. In a burlesque or humorous sense: Approved, recognized ‘standard’.

The word CLASSIC, on these definitions, must be considered to be without any inherent adaptation to distinguish when considered in relation to the goods under consideration.  It is quite apparent that the word CLASSIC, in relation to these goods, is not seen by the public or other traders as denoting a trade source but as either an extolment of the high quality of the goods or a comment that the goods are 'standard' - in the sense of both of the above definitions - that is, that they contain no added ingredients or are the 'normal' or base of the manufacturer's product range.

I now consider the above factors alongside the tests for deceptive similarity, set out in, for example, Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414–15, and Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658. In the latter, 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 challenge mark or device is the same. The effect of spoken descriptions must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.”

In the light of the immediately above quotation and the lack of inherent adaptation of the word CLASSIC, I do not believe that the trade marks under discussion are deceptively similar.  The lack of any inherent adaptation in the word CLASSIC leads me to the conclusion that the cited trade marks gain their identity, by which they will be remembered and recalled by the public, from the combination of the elements of which they are composed.  The word CLASSIC in the cited marks has no distinctive strength which might fix it in the minds of the public as denoting or indicating a connection in the course of trade or a common trade origin for the trade marks under consideration.  The issue could, of course, be quite different if the word CLASSIC were the sole, or more prominent, element in the cited trade marks (or this one), but it is not.

I will comment, before moving on to the balance of my reasons, that, had I to consider the honest concurrent user provisions under subsection 44(3) of the Act, I could not have applied them.  It is the applicant's contention that the cited trade marks are unused, thus the claim that there has been no confusion and deception is nugatory.  The intention to use which was apparent when the cited trade marks were lodged is a continuing one.  The owners of the cited trade marks could commence use of their trade marks at any time.  If the current application were to be accepted on the basis of honest concurrent use of unused trade marks, confusion and deception could well ensue if the owners of the cited trade marks were to commence use of their allegedly unused trade marks.  The appropriate forum for such allegations of non-use is therefore via the provisions of Part 9 of the Act that provide for removal of a trade mark for non-use.

Section 41
Section 41 of the Act allows:

Trade mark not distinguishing applicant's goods or services

41.(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so  distinguishing the designated goods or services:

(a)     the Registrar is to consider whether, because of the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)     if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c)     if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)     if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)     in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)the time of production of goods or of the rendering of services.

In Oregon, supra, Branson J explained the presumption of registrability referred to in section 33(1):

Each of ss 33 (1) and 41 involves the concept of the registrar being “satisfied”. Where the Act requires the registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities:  Rejfek v McElroy (1965) 112 CLR 517; at 521.

Subsections (3) – (6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41 (2). Subsection  (3) requires the registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the registrar to conclude:
(a)      that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b)      that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c)      that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41 (2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33 (1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41 (4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the registrar reaches conclusion  (b) above, then the provisions of paras  (a) and (b) of s 41 (6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar will not reject the application pursuant to s 41 (2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33 (1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the registrar must reject the application pursuant to s 41 (2)

I will first take into account, in terms of subsection 41(3), the extent to which the trade mark CRANBERRY CLASSIC is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

I have previously referred to the Oxford Dictionary definitions of the word CLASSIC. These definitions show the word to mean either 'of first class quality' or as being a 'standard' or norm.  The word CRANBERRY denotes the fruit from which the product, a fruit juice, is made.  The words that comprise the trade mark therefore denote that the goods are standard Cranberry fruit juices or first class Cranberry fruit juices.  Having read the evidence submitted by the applicant, it is obvious that it is using the words in the former sense, that is, to denote its standard cranberry juice.  I refer to my discussion of the evidence, above, where I observed that the applicant is using the words CRANBERRY CLASSIC in exactly the same manner that it is using the words RUBY RED GRAPEFRUIT, CRANBERRY APPLE, CRANBERRY BLACKCURRANT or PINK GRAPEFUIT.  In other words, it is using the words in a way that they appear to denote only that the contents of the bottle are its standard cranberry juice with no additions.

The word CLASSIC does not gain any inherent distinctiveness through its juxtaposition with the word CRANBERRY since the expression CRANBERRY CLASSIC is more specific about the nature of the goods than is the word CLASSIC, solus.  Accordingly, the considerations in the Diamond T case (1921) 38 RPC 373 are not applicable.

In Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, at 515, Kitto J remarked that the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer. He went on to approve of Lord Parker's exposition on the subject in Registrar of Trade Marks v W & G  Du Cros Ltd [1913] AC 624, at 635, in which he said that whether a trade mark is "adapted to distinguish" was 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 … 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.”

Kitto J later said in Bayer Pharma Pty Ltd v Farbenfabriken Bayer AG (1965) 120 CLR 285 at 332–3:

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 businesses and without any improper motive, to desire to use upon or in connection with their goods.

With these tests in mind, I conclude that the words CRANBERRY CLASSIC lack any inherent adaptability to distinguish the applicant's goods from those of other traders as, (both in the sense of indicating that juices are top quality cranberry juice and in the sense of being standard cranberry juice), the trade mark is one that other traders are likely in the ordinary course of their businesses, and without any improper motive, to desire to use upon or in connection with their goods.

It follows, then, that in terms of Branson J's analysis of section 41 in Oregon, supra, it is not appropriate for me to consider the application under the provisions of section 41(5) - I should consider the application in terms of section 41(6).

The applicant has used the sign CRANBERRY CLASSIC in Australia since 1995 and has achieved what appear to be moderate sales and expended an apparently similar sum on advertising.  There are no declarations from the public or from other traders to indicate that they see the sign as a trade mark that is capable of distinguishing, or does actually distinguish, the goods of the applicant from those of other traders.  I mention that in her decision Justice Branson noted, with apparent approval, the words of Jacobs J, who "observed, no doubt accurately, in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 286 and 302, that evidence of promotion and use does not, without more, demonstrate distinctiveness. Nonetheless, common sense suggests that significant promotion and use of a trade mark among people concerned with the relevant market will have a tendency to enhance, rather than diminish, the trade mark’s capacity to distinguish the goods in respect of which it is used from the goods of others."

However, I think that for sales and advertising figures to contribute to the trade mark's capacity to distinguish the goods of the applicant, it should be clear from the evidence that the sign in question is actually being used as a trade mark. I consider that the evidence before me shows that the trade mark consists wholly of a sign which is being used to indicate, in the language of Note (a) to subsection 41(6), the 'kind' of the goods. As I have mentioned above, the trade mark is used interchangeably with the descriptions RUBY RED GRAPEFRUIT, CRANBERRY APPLE, CRANBERRY BLACKCURRANT or PINK GRAPEFUIT within oblique panels on the bottle labels over which the applicant's OCEAN SPRAY logo is partially imposed over each panel containing the generic description. To my mind, the applicant's action of interchanging a trade mark which lacks inherent capacity to distinguish with other terms which similarly lack inherent capacity to distinguish effectively decreases the prospects that it could gain any capacity to distinguish. Further, the association of the words CRANBERRY CLASSIC with the other descriptions of 'kind' does, I consider, ensure that it will only be seen as a description of 'kind' by both the public and other traders. If anything, the degree of sales and advertising that I have referred to above only serve to perpetuate the lack of any gain in the trade mark's capacity to distinguish since it reinforces the fact that the trade mark is being used in such a way that it will only be taken to describe the contents of the bottle to which it is affixed.

These considerations are strengthened by the fact that the trade mark is within a panel on the bottle partially superimposed, as are the descriptions on the other bottles, by the applicant's OCEAN SPRAY trade mark.  I have not been able to find one example of the trade mark shown in use, on its own and independent of the trade mark OCEAN SPRAY, in the evidence.  The trade mark thus appears to fall within the category of trade marks referred to as 'limping trade marks' by Jacob J in Philips Electronics nv v Remington Consumer Products 40 IPR 279 when he said:

… what we have here is a kind of “limping mark”, always used with what is obviously a proper trade mark The same was true of TREAT which was always used with SILVER SPOON. Neither sign was ever used by the proprietor on its own. And that was evidence of a lack of a capacity to distinguish. I do not of course say that you cannot have two trade marks used for the same goods, or that a part of a sign — a “subsign” — cannot also be a trade mark: both FORD and FIESTA are obviously valid marks. But there are these other cases, where the sign proffered as a valid mark cannot really stand up on its own.

I might also mention that the appearance or presentation of the trade mark, that it describes only the kind of juice in the bottle, is reinforced by its juxtaposition with the trade mark OCEAN SPRAY which is not only inherently distinctive but is also distinctive through use.

It might be the case that declarations by persons independent of the applicant would dispel these conclusions or demonstrate that they have been wrongly formed.  However, there are no declarations as to whether persons independent of the applicant regard the words CRANBERRY CLASSIC as distinguishing the goods of the applicant from those of other traders rather than being a description of 'kind'.

While Mr Maxwell did make argument that I should look at 'other circumstances' in terms of my considerations under subsection 41(6); the 'other circumstances' which he invites me to consider relate to issues other than those concerning use of the trade mark.

In the light of the above discussion, it follows that the applicant not established that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods as being those of the applicant and hence, accordingly, the trade mark is taken not to be capable of distinguishing the designated goods from the goods of other persons.

Decision
I refuse to register application 753694, subject to any appeal from my decision.

Ian Thompson
A/Hearing Officer

20 August 1999