OMS Investments Inc. v DuluxGroup Australia) Pty Ltd

[2014] ATMO 9

TRADE MARKS ACT 1995

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

Re:Opposition by OMS Investments Inc. to trade mark application number 1205722 (1,5) - WEED ‘N’ FEED - in the name of DuluxGroup (Australia) Pty Ltd

Delegate:	Debrett Lyons
Representation:	Applicant: Siobhan Ryan of Counsel, instructed by Davies Collison Cave, Patent & Trade Mark Attorneys Opponent:  Khajaque Kortian, of Spruson & Ferguson, Patent & Trade Mark Attorneys.
Decision:	2014 ATMO 9 Sec. 52 opposition: Sec 41 ground pressed – no inherent adaptation to distinguish – registration refused. Costs awarded against Applicant

Background

1. On 22 October 2007 (‘the Filing Date’) Dulux Group (Australia) Pty Ltd (‘the Applicant’) applied to register WEED ‘N’ FEED (‘the Trade Mark’) for the following goods (‘the Goods’) in classes 1 and 5.

   Class: 1 Fertilisers; chemical products for use in agriculture, horticulture, forestry; manures

   Class: 5 Preparations for killing weeds; fungicides; agricultural and horticultural products in this class for destroying pests; products in this class for controlling diseases in plants

2. The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner found that there was a ground for rejecting the application under section 41 of the Act. In particular, the examiner reported that the Trade Mark was descriptive of the Goods and was only to some extent inherently adapted to distinguish the Goods from those of other traders.

3. The attorney for the Applicant provided a response to the examination report which included a declaratory statement as to use of the Trade Mark by the Applicant and its predecessors in interest to the Trade Mark before the Filing Date on the basis of which the examiner accepted the Trade Mark for possible registration.

4. Advertisement of acceptance occurred on 10 December 2009 subsequent to which a Notice of Opposition to registration was filed by a company later acquired by OMS Investments Inc. (‘the Opponent’).

5. After the parties had provided their evidence they asked to be heard.  I am a delegate of the Registrar of Trade Marks and I heard this matter on 5 December 2013 in Canberra.  The Applicant was represented by Siobhan Ryan of Counsel, instructed by Davies, Collison, Cave, Patent & Trade Mark Attorneys.  The Opponent was represented by Khajaque Kortian, a partner of Spruson & Ferguson, Patent & Trade Mark Attorneys.

6. The parties submitted outline summaries of their submissions prior to the hearing and I have also taken those summaries into account in reaching my decision.

Basis of the opposition

1. The Notice of Opposition lists a number of grounds of opposition but the Opponent made it plain it only pressed the ground dependent on section 41 of the Act. I treat the remaining grounds listed in the Notice of Opposition as abandoned.

2. In order to succeed in its opposition the Opponent bears the onus of establishing that ground on the balance of probabilities.  The date at which the Delegate is to consider the issues arising from the grounds of opposition is the Filing Date (Registrar of Trade Marks v. Woolworths Limited 45 IPR 411; and Torpedo’s Sportswear v. Thorpedo Enterprises Pty Limited 59 IPR 318 (at paragraph 78)).

3. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came into effect on 15 April 2013. It repealed section 41 of the Act and substituted a new section 41. The Registrar’s position is that the new iteration of section 41 applies to trade mark applications with a filing date on or after 15 April 2013 and that the repealed provisions continue to apply to trade mark applications, such as this one, with a Filing Date before 15 April 2013 (Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50 (24 June 2013)). The parties did not take issue with the Registrar’s position.

The Evidence

1. Evidence-in-support of the opposition comprised a statutory declaration by John Robert Johnston made on 1 March 2011.

2. Evidence in answer to the opposition comprised declarations by Paul Speers made on 30 September 2011; Michael Keelan made on 22 June 2012 ; George Benyon made on 14 October 2011; Colin Campbell made on 9 May 2012; and Adrian Triplett made on 5 December 2011.

3. Evidence-in-reply comprised declarations by Noelle Clair Weatherly made on 6 December 2012 and Neville Ronald Sloss made on 12 March 2013.

4. Both sides filed further evidence which took the form of declarations by Nicholas James Holmes made on 7 July 2013; Noelle Clair Weatherley made on 20 September 2013 and Neville Ronald Sloss made on 23 September 2013.

Submissions & Reasoning

1. The parties agreed that there was very little if anything of a factual nature in dispute. They agreed on the legal principles to be applied. At the time of filing, section 41 of the Act provided, relevantly:

Section 41:Trade mark not distinguishing applicant’s goods or services

(1)…

(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 to any extent 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.

1. The Applicant conceded that the Trade Mark did not qualify for registration under section 41(3). It submitted that the assessment of the Trade Mark should be made under section 41(5). It submitted that the Trade Mark falls in the category of marks whose minor grammatical quirks were found to imbue a modicum of inherent distinctiveness, sufficient to enliven s 41(5).

2. Much of the written and oral submissions was taken up with debate about whether the Trade Mark was used in the form in which it was applied for, and the quality and extent of the usage of the Trade Mark (with or without those additions) by the Applicant and its predecessors in business.

3. Nevertheless, as I made clear at hearing, I considered that the Trade Mark was of a nature where the primary issue was whether it fell under section 41(5) or 41(6) of the Act.

4. The Applicant placed particular reliance on Re Application by Allergan Inc (1996) 37 IPR 638, a decision made soon after the Act came into force. In that case Hearing Officer Murray was asked to consider an application for the trade mark “clean-n-soak” for a contact lens cleaning solution. She decided that the trade mark was to be considered under section 41(5), rather than 41(6), for the following reasons:

   My reasons for coming to this conclusion are based largely on consideration of the explanatory note associated with s 41(6), which states:

   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.

   The uncompromising description "ordinarily used to indicate", appears to preclude all but the most commonly used phonetic equivalents from falling into this category of trade marks.

   There is no doubt that there do exist shortened phonetic equivalents of longer phrases that are popularly used in descriptive advertising. Phonetic equivalents that are "ordinarily used to indicate", and that would therefore come within the ambit of s 41(6). "Wash'n'wear" and "b-b-q" are examples that spring to mind. However, in practice, eye catching hyphenated words such as "clean-n-soak" are more widely popular with advertisers as trade mark, rather than descriptive, material. As a result, and in contrast to other equivalent words in common use, these words have something of a "trade mark feel" about them.

   The hyphenated trade mark CLEAN-N-SOAK, with the "a" and "d" from "and" omitted, is clearly designed to impart certain information about the contact lens care preparations to which it is applied, but does so by way of a catchy single word. The word by no means conveys the same visual impression to the prospective buyer as would a label proclaiming the product to be "clean and soak" solution. This is despite the fact that the two alternatives may be practically phonetically equivalent. Another phonetic alternative, "clean'n'soak", might be suspected of crossing the barrier into s 41(6), as the apostrophized "n" is the more usual means of expressing "and".

   However, there is one other relevant factor to consider when looking at the combination "clean-n-soak", which would have applied equally to "clean'n'soak", should it have been necessary (which it was not) for me to consider the inherent capacity of that combination to distinguish the applicant's goods. That additional relevant factor is the actual grammatical usage of the combination. The recognized trade term most likely to be required by other traders in honestly describing such a product is not "clean and soak solution", but the phrase used even by the applicant on its own labeling, ie "cleaning and soaking solution"

   By virtue of the combination of the three factors, phonetic rendering, hyphenation and grammatical usage, I believe that, although the meaning behind the combination "clean-n-soak" is perfectly clear, it is not quite "a sign that is ordinarily used to indicate" the goods in question. It follows, therefore, that there is some doubt as to whether the trade mark is totally devoid of adaptation to distinguish.” (At p 641-642)

5. I do not feel that the decision in Re Application by Allergan Inc. ultimately assists the Applicant.  Even if I ignore the Federal Court decisions which soon followed that case and which in my view disfavor the Applicant, there remain small but critical points of distinction between “clean-n-soak” and the Trade Mark before me.  The Applicant refers to the “visually pleasing mirror-effect of the phonetically similar words “Weed” and “Feed”, which conveys something of a “trade mark feel”.”   I tend to agree with that submission but I must balance it against the manifest capacity of the Trade Mark to ordinarily indicate the intended purpose of the applied-for goods.  Unlike the trade mark “clean-n-soak”, there is to my mind and at the Filing Date no appreciable grammatical distinction to be drawn between the expression “weed and feed” and the expression “weeding and feeding”, both of which I believe would be equally used by traders, a conclusion supported by the evidence which shows that the expression “weed and feed” has been used in a non-trade mark sense by various individuals, unconnected with the parties.  Nor am I moved by the Applicant’s submission that the words “herbicide” or “weed killer” and “fertiliser” are the usual words to use in place of the expression “weed and feed” albeit that the evidence shows that sometimes – as I would expect – those words are used to describe the same functioning of similar goods. In my view, “weed and feed” and its colloquial equivalent “weed ‘n’ feed” is an ordinary way of indicating the nature of the Goods.

6. I find that the Trade Mark falls for consideration under section 41(6). That finding seals the fate of the application since the evidence simply does not support the Applicant’s further submission that “the Applicant’s evidence supports a conclusion that as at 22 October 2007, being the priority date, the Weed 'n' Feed trade mark did distinguish the designated goods as being those of the Applicant.”

7. In the first place there is evidence, admittedly limited and not always from this jurisdiction, of use of the phrase “weed and feed” and variations thereof as an ordinary description by other traders.  Moreover, whilst the evidence shows isolated examples of use by the Applicant of the Trade Mark on its own, the bulk of the promotional material before me shows use of its house mark “YATES” with, or in proximity to, the Trade Mark.  In Woolworths Ltd v BP plc (No 2) (2006) 70 IPR 25, Heerey, Allsop and Young JJ stated at [79]:

   The trade mark that is the subject of the application must conform with the trade mark that was used before the relevant filing date, because it is the extent to which that prior use has distinguished the designated goods or services as being those of the applicant which must be assessed. It is only where the extent of that prior use has had the consequence that the trade mark does distinguish the applicant’s designated goods or services from those of other persons that the trade mark is “taken to be capable” of so distinguishing the applicant’s goods or services: s 41(6)(a). If the prior use has not had that consequence, the trade mark is taken not to be capable of distinguishing the applicant’s goods or services and the application for registration must be rejected: s 41(2) and (6)(b). Under s 41(6), there is no wider inquiry into the capacity or adaptability of the mark to distinguish the applicant’s goods or services.

8. The Applicant sought to convince me that both YATES and WEED ‘N’ FEED functioned as trade marks.  It provided evidence from traders and others connected with the business in these goods that WEED ‘N’ FEED uniquely indicates the Applicant’s goods.  I have given that evidence ample consideration.  Bearing in mind that it is the Opponent who has the burden to prove its opposition, I have balanced that evidence against the counter indications and I have concluded that the evidence falls short of the type of proof that the Trade Mark, solus, distinguishes the Goods of the Applicant from those of all others.

9. For these reasons the Opponent has established its opposition under section 41.

Decision

1. Subsection 55(1) of the Act provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:       For limitations see section 6.

2. The Opponent has established its opposition to registration.  I refuse to register trade mark application 1205722.

Costs

1. Having been successful in this matter the Opponent is entitled to its costs which I award against the Applicant.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
31 January 2014