P.A. and E.V. Strauss

[1999] ATMO 97

TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR
OF TRADE MARKS, WITH REASONS

Re:Application number 748147, in the name of P. A. and E. V. STRAUSS, for the registration of the trade mark TROPICAL BIRCH.

Background
P. A. and E. V. Strauss ("the applicants") have filed an application to register the trade mark TROPICAL BIRCH in class 31 in respect of goods described as "plant".  From the subsequent history of this application, it is clear that the goods in question, in relation to which the trade mark is to be used, are a particular sort of plant.  The applicants will draw their revenue from the sale of those plants and from the sale of tags to identify certain plants as being of that sort.  From a file note, it seems that the applicants will also give away seeds of the plant for free on condition that a tag is bought, from a designated source, at a cost of fifty cents. 

The applicants expressed some concern about the extent to which the present application will protect their rights in relation to paper tags.  However, in addition to the dealings in seeds and tags, they appear to be selling plants so I believe the decision to apply in class 31 was correct. 

For the record, I note that the applicants have been critical of staff at the Brisbane State Office of IP Australia, which incorporates the Trade Marks Office, for not being able to advise them on the need, or otherwise, for an application in class 16 in respect of the tags themselves.  Mrs Strauss has noted, in a letter on file, of those staff: "their attitude seemed to be that it wasn't their business to go into detail or give advice".  However, the extent to which the applicants' dealings in seeds and in tags to be bought from a third party would support a registration in class 16 is a complex one.  I do not have enough information to answer that question and, even were all the information complete, I doubt that the answer would be clear-cut.  The Trade Marks Office cannot give legal, as distinct from procedural, advice.  If State Office staff declined to do so on what is, in my view, a difficult and complex question, I believe that this was a proper decision.

The applicants have also asserted that they were assured, after filing but before the first report issued, that there would be "no problem" with their application.  However, the applicants' primary question, to judge from Mrs Strauss's letter written on 23 April this year, may have been about the correctness of the decision to apply in class 31.  The Trade Marks Office is not able to be certain about the outcome of examination until that examination is completed.  While I appreciate that the objection raised by the examiner, even when corrected, must have caused the applicants real confusion and upset, I find it unlikely that the applicants were given a blanket assurance that their application was acceptable.  I can only assume that there was a misunderstanding at that point.

I note that the applicants now have access to the services of a patent attorney, and that this attorney has elected to continue with the application in class 31.  It is with the merits of that application that I will now deal.

Issues and arguments
An examiner of trade marks reported on this application on 11 February 1998.  That report contained an unintended error, which I note was corrected as soon as the applicants pointed out the mistake.  However, as the applicants are not convinced that the merits of their case have been looked at correctly, I will set out the erroneous terms of that first report.

The examiner has reported:

I am not prepared to recommend your trade mark for acceptance and registration because it is not capable of distinguishing your goods from the goods of other traders.  It is not capable of distinguishing because it is the name of a plant.

Your trade mark is the words TROPICAL BEECH (sic) which appears to be the name of a particular plant.  I have found a reference to a genus of tropical trees, Schizomeria, which are sometimes referred to as Australian Beech (sic).  The genus Betula, or beech (sic), is of course well known as a northern hemisphere group of trees, some of which are use as ornamental trees in Australia.

The examiner went on to explain that a trade mark was something used or intended to be used as an indication of the commercial origin of goods.  She stated that the name of a plant cannot function as a trade mark for plant material.

The applicants rang the Trade Marks Office and complained about the terms of the report.  Both applicants spoke to the examiner and pointed out that the trade mark had been misquoted, in all instances, as being TROPICAL BEECH when it is TROPICAL BIRCH.  The examiner immediately issued a revised report and apologised fully for the error. 

The amended report still refers, correctly, to, " a genus of tropical trees, Schizomeria", and to "the genus Betula".  The latter, as both the applicants and the examiner were aware, is in fact the genus of various trees commonly known as birch.  Since the subsequent corrected report continued to turn on references to Schizomeria and Betula, what was at issue was a defect in setting down the results of the research, not an error in the research itself.  The error was clearly unfortunate.  The Trade Marks Office regrets this failing.  To my knowledge such errors are rare and the office tries hard to avoid them.

In the correspondence and telephone conversations that have ensued, the applicants have noted that, particularly among plant breeders, trade marks are regularly misused, or at least used without the care that, in other lines of commerce, the owners of trade marks take to avoid generic use of their trade marks.  However, the system for the registration of trade marks must operate on the assumption that the owners of rights will not use them in ways that weaken or invalidate their registrations.

The applicants, during examination, have also noted that there are inherently very descriptive words in use as trade marks.  The examiner has referred to several of the examples cited by the applicants and has noted that some of them are not registered.  Others were accepted on evidence that, despite being inherently descriptive, they were still capable, because of their established reputation, of distinguishing one trader's goods or services from another's.

I will not add to this decision by attempting to compare the merits of TROPICAL BIRCH with trade marks as diverse as BETTER HOMES AND GARDENS and EASYCALL.  That is to compare unlikes.  The Trade Marks Act provides a framework for individually assessing the registrability of such unlike marks.  The examiner has already done sufficient to explain the terms on which trade marks in general may be accepted and my concern here is with how the applicants' trade mark is to be assessed.

The applicants have filed evidence of the use of the trade mark.  They pointed to the fact that their trade mark has been used, and promoted to nurserymen, and provided examples of this.  The examiner was not convinced, replying that the applicants had used their trade mark in a way that did nothing to highlight any function as an indication of the source of the goods.

The applicants believed and asserted that the merits of their mark were not being properly assessed and, after bringing their complaint to the attention of a Deputy Registrar in the examination section, requested a hearing to decide the matter.  In conducting that hearing, I was exercising a delegation directly from the Registrar of Trade Marks.  What follows is my assessment of the merits of the applicant's case, independent of the conclusions of the examination section that has already assessed it.

I turn to the submissions of Mr Ian Tannahill, a patent attorney of the attorney firm of Pizzeys, engaged by the applicants to represent them at the hearing held in Brisbane on 27 August 1999.  When I heard Mr Tannahill, I was not convinced that I could accept the application.  I gave him an opportunity to formalise his submissions in writing.  This he did on 2 September 1999.

Mr Tannahill began his submission by noting that each variety of plant has a unique botanical name.  These botanical names will differentiate:

• all the species of plants growing in an area

• geographically isolated variants of what is essentially the same species.

Common names, on the other hand, are a source of confusion.  A "blue gum" bought and sold in good faith in Victoria may grow poorly or not at all in New South Wales.  In that state, according to Mr Tannahill, the name blue gum is commonly used to designate Eucalyptus saligna, whereas, in Victoria, a blue gum is likely to be a Eucalyptus st Johnii.  Again according to Mr Tannahill, the difference between the two plants may not be obvious to the buyer until, six months after the sale, the "wrong" plant dies.

Similarly, there are many varieties of birches.  Leaving aside the existence of a plant with a common name of Australian birch, to which the examiner has already referred, there are many sorts of trees and shrubs of the species commonly referred to as birch.  These are, according to Mr Tannahill, typically found in northern temperate and Arctic climates, although Mrs Strauss has referred to others that grow in much warmer climates.  Some Betula nigra, or river birch, for instance, grow in Canada and others in Florida.  According to Mr Tannahill it would be impossible to determine, from inspection of the seedlings of the trees in question, whether the plant was suited to Canada or to Florida.  The difference, however, would be crucial to the survival of the seedlings in the warm temperate conditions of Sydney, let alone northern New South Wales.

Mr Tannahill accepts one point relied on by the examiner, in relation to the meaning of the words TROPICAL BIRCH.  As he put it:

The likely meaning that would occur to persons is either a birch-like plant that grows in the tropics or a birch-like plant that naturally occurs in the tropics.

Against this background, the applicants have come upon a variety of Betula nigra plants that can survive the climate of northern New South Wales and of Brisbane.  The applicants bought their original stock of plants from "a nursery in Sydney".  Mr Tannahill states that, until the applicant began to look into the matter, "no nurseryman would have had any idea what was meant by a request for a tropical birch because, to the best of their knowledge, at that time a Birch tree that was capable of growing in the tropics was unknown".

I do not believe that Mr Tannahill meant that a person in the industry would have seen the request for a tropical birch as meaningless gibberish.  Mr Tannahill has already accepted that the words have a meaning.  What he argues is that, to a nurseryman at the time, the existence of such a plant was unknown and unlikely.  The difference is critical.  In my view, the words in the applicant's trade mark are much like "unbreakable carbon fibre", in relation to carbon fibre reinforcements.  They have a very clear meaning and are utterly descriptive, albeit that a thing to match the description is not necessarily known to exist.

Mr Tannahill goes on to build an argument on the premise that anyone else who wanted to sell tropical birch plants, plants that did not originate from the applicants, would have been acting dishonestly.  That may be so, if such plants were unknown or unobtainable, and I fully accept that the applicants are keen to prevent such dishonesty.  However, the test for registrability under s 41 is sufficiently subtle as to be able to deal with this situation.  I therefore turn to the specifics of that question.

Under s 41(2), an application must be rejected if it is not capable of distinguishing the goods of the applicants from those of others.  Branson J., in Blount Inc v Registrar of Trade Marks 40 IPR 498 at 404-5, noted that the structure of s 41 is "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…." Subsections (3) to (6) of s 41 show that the first thing to assess is the extent to which the trade mark TROPICAL BIRCH is inherently, of itself, adapted to distinguish the applicant's goods from those of other traders. I turn to that question.

Inherent adaptation
I put it to Mr Tannahill at the hearing that, if the applicants had bought their initial stock of seedlings from a Sydney nursery, there were presumably other nurserymen who could do likewise, or who could import River Birch seeds or seedlings from Florida.  It seems to me that, in such a case, any nurseryman who finds a variety of birch that can grow in the tropics is entitled to call it a tropical birch, and that there is probably no better name for it[1]. 

[1] I will accept that the applicants' plants are suited for the tropics.  There is no suggestion, in anything before me, that the applicant's trade mark is inherently misdescriptive.  Thus, the applicant has not faced an objection under s 43, which deals with inherently deceptive trade marks

The fact that such a plant may be newly discovered, or that its existence or properties had not been previously realised, is not to the point.  What is at issue in this trade mark is not a fanciful association of ideas.  It is not like the often quoted example of NORTH POLE as a trade mark for bananas.  If at any time such a tropical variety of birch is discovered, any plant breeder is entitled to describe it as such.  If on the other hand it already exists, and nurserymen want to tell their customers that birch trees are not just plants for cold climates, the same conclusion applies.  What is at issue is, per Kitto J in Clark Equipment Co v Registrar of Trade Marks, (1964) 111 CLR 511 at 514: "the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess".

It is not necessarily fatal that there is some measurable likelihood that other traders will want to use such a word or words for the sake of its ordinary significance.  The test hinges on the degree to which this is likely, as was noted in the case to which I have just referred, at 513.  However, I can think of no words that are more likely to be wanted to describe the attributes of a birch that will grow in a climate that might otherwise be said to be warmer than mild temperate.  Therefore, I conclude that, of themselves, those words have no inherent adaptation to distinguish the applicants' goods.

I note, but do not accept, Mr Tannahill's argument, under this heading, that:

The only birch trees that are guaranteed to grow in warm temperate climates are those which are derived from the fifty plantlets the applicants originally purchased in 1994.

Firstly, this is contrary to the evidence on the file, provided by Mrs Strauss, that there are river birch plants growing quite readily in the Florida climate, which she describes as "very tropical".  Secondly, even if it were true that the applicants had completely cornered the supply of such plants, the words in question are still just as applicable to the goods in question.  They are an appropriate and ordinary description.

In such a case, s 41(6) is the only subsection applicable.  It reads:

(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.

Words cannot be used to be both an indicator of a variety of tree and a trade mark for trees of that sort.  See, for example, the English cases OGEN trade mark, [1977] RPC 529 and Wheatcroft Bros trade marks, (1954) 71 RPC 43. There, the trade marks OGEN and 11 others were removed from the register because they had come to denote varieties of, respectively, melons and roses.

A trade mark is an indication of the commercial source of goods, not of their type or nature.  This is so, even though, in common speech, trade marks can be used carelessly.  For example, in relation to computers, one might loosely say that a MACINTOSH is a different sort of computer to one that is, perhaps, IBM-compatible.  However, it is still quite clear that MACINTOSH is a trade mark.  In relation to clothing, on the other hand, the very similar word mackintosh is descriptive of a particular sort of raincoat.

That being so, did the applicants' trade mark, at the filing date, distinguish their plants, or did it merely describe them?  I note that, on the face of it, there were no other nurseries selling a tropical birch.  Such a plant was, at that time, either unknown or overlooked.  None the less, at the filing date, the words had an ordinary English meaning. 

Mrs Strauss herself, in her letter of 23 April 1998, said something that is very relevant.  She described the river birch that the applicant sells as an indigenous plant that will grow in a very wide of climates up to "very tropical areas with temperatures up to 48 degrees celcius - which is the whole point of our promoting the plant as a Birch that will grow and thrive in the tropics and sub-tropics, hence the name Tropical Birch" (emphasis added).

This approach has been taken into the market.  I have looked at the evidence supplied by the applicant.  On the file there is promotional material issued by the China Trading Co Pty Ltd, in relation to trees that I assume are of the variety promoted by the applicants.  In the text of this, the trees are identified as "TROPICAL BIRCH" TM app.  However, in the May 1998 issue of Australian Horticulture, in an article headed "Tropical Birch warms to sunny climes", this careful distinction is not made.  The first paragraph reads:

After seven years of trials in different areas of Australia, the tropical birch, Betula nigra, has proven suitable for street and garden plantings in warm, temperate and subtropical areas". 

Then there are the applicants' own plant lists.  In these, under an introduction that indicates the plants are grown in open paddocks subject to extreme climatic variations, the plants are listed in two columns.  On the left, they are specified in alphabetical order by botanical name.  The first two items are Agapanthus praecox and Betula nigra.  Beside these, in the right hand column, are things that could be trade marks but that, in many instances, are clearly descriptive.  In the case of the first two listings, the right-hand column indicates, respectively "Agapanthus - Blue" and "Tropical Birch".  Further down the page are items such as Leptospermum petersonii, to the right of which is "Lemon-scented T-Tree".  Below again, to pick another example, is the entry Melaleuca 'Revolution Gold', beside which, on the right, in the same column as "Tropical Birch", is "Yellow-Gold Foliage".

Perhaps trade mark rights are claimed in some of the other terms appearing in the entries in the right hand column for some of the plants.  It would not be fair to pick individual ones out for attention.  The trade mark merits of those words are not the subject of my decision, and the endangering of any continued trade mark rights is not something that I will comment on.  However, the overall look of the list is that the right-hand column is, more likely than not, an indicator, not of trade origin, but of the variety of the plant in question.

I concede that careless use of trade marks appears to be common in the horticultural industry.  I also concede that, even when the owner of a trade mark is vigilant, journalistic licence is often applied unduly.  None the less, I consider it highly unlikely that the use made by the applicants, by the China Trading Co Pty Ltd and in Australian Horticulture, has reinforced the significance of the words TROPICAL BIRCH as a trade mark.  On the contrary, as was said by Lloyd-Jacob J, in Wheatcroft Brothers trade marks, previously referred to, at p47:

An intention to use the mark as the name of a variety appears to be wholly inconsistent with a bona fide intention to use it as signifying a connection in the course of trade with the supplier, for which purpose it must necessarily be capable of differentiating between examples of the same variety coming from different trade sources. 

Therefore, I do not accept that the applicants' manner of use, or the extent of that use, can have resulted in the words TROPICAL BIRCH coming, at the filing date, to have meant a plant sourced through the applicants, as distinct from the same or a similar plant sourced through others.

Accordingly, the only conclusion open to me is that the applicants' trade mark did not distinguish the applicants' goods at the time of filing.  Therefore, in terms of s 41, it is not capable of distinguishing the applicants' goods.  As such, the only action open to me under s 41(2) is to reject the application.  I now do so.

T. Williams
Hearing Officer
29 September 1999