Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd
[2015] ATMO 69
•5 August 2015
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Pacific Magazines Pty Limited to registration of trade mark application 1450723 (16, 41) - TEST KITCHEN - in the name of Bauer Consumer Media Limited
Delegate: | Michael Kirov |
Representation: | Opponent: Chris Burgess of Counsel, instructed by Peter Karcher and Sophie Clark of ClarkeKann Lawyers Applicant: Relied on written submissions prepared by Macek Rubetzki of Media Legal |
Decision: | 2015 ATMO 69 Section 52 opposition: s 41 considered – trade mark not capable of distinguishing Applicant’s goods or services notwithstanding evidence of use filed - registration refused. |
Background
This is an opposition brought by Pacific Magazines Pty Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Bauer Consumer Media Limited (“the Applicant”):
Registration Number: 1450723
Filing Date: 27 September 2011
Goods:Class 16: Books; printed recipes; printed cooking tips; magazines and periodicals
Services:Class 41: Publishing; advisory services in relation to cooking; cooking classes; cooking instruction; culinary classes; culinary instruction; cooking schools; presentation of cooking and culinary awards; arranging and conducting of cooking exhibitions; publication of recipes; consumer education services including in relation to food, cooking, recipes and consumer culinary goods and consumer services; dietary education services; cooking show services; cooking demonstrations for instructional purposes; practical training (demonstration); live show production services; magazine publishing; publication and provision of information in the fields of cooking; teaching; information, support, assistance, consultancy and advisory services in relation to the foregoing
(“the Goods and Services”)
Trade Mark: TEST KITCHEN (“the Opposed Mark”)
Endorsement: Provisions of subsection s 44(4) and/or Reg 4.15A(5) applied.
Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 28 November 2013. The Opponent filed a Notice of Intention to Oppose on 28 January 2014, followed by a Statement of Grounds and Particulars (“SGP”) on 28 February 2014 raising opposition grounds corresponding to ss 41, 58A and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 13 March 2014.
For their evidence the parties rely on the following declarations:
Evidence in Support
▪ Barbara Ann Northwood made on 4 June 2014, with Annexures BN-1 to BN-3
▪ Darlene Alston made on 6 June 2014
▪ Fiona Legdin made on 18 June 2014, with Annexures FL-1 to FL-15 (“Legdin 1”)
▪ Sophie Anne Clark made on 19 June 2014, with Annexures IP-1 to IP-11 (“Clark 1”)
▪ Sophie Anne Clark made on 19 June 2014, with Annexure A (“Clark 2”)
Evidence in Answer
▪ Macek Rubetzki made on 15 July 2014, with Annexure A (“Rubetzki 0”) [Annexure A is a copy of a declaration made by Mr Rubetzki on 9 May 2012 with Exhibits MR-1 to MR-26, the original of which was filed with IP Australia in support of acceptance of the opposed application for registration (“Rubetzki 1”)]
▪ Macek Rubetzki made on 17 July 2014, with Annexures MR-1 to MR-49 (“Rubetzki 2”)
Evidence in Reply
▪ Fiona Legdin made on 23 September 2014, with Annexures FL-A to FL-D (“Legdin 2”)
I will refer as necessary to the parties’ evidence in the discussion below, but for now note the following by way of background. The parties are both large Australian publishers and, as it was put by the Opponent’s Counsel:
…are competitors in the publication of magazines that contain cooking columns with recipes and tips. Their magazines are market leading publications with high readership, such as New Idea and that’s life! (the opponent) and The Australian Women’s Weekly (the applicant). As an adjunct to their magazines, they also publish cook books and recipes and cooking tips online.
The evidence indicates that not only both parties, (including their respective predecessors in title), but also several third parties have used the words “test kitchen” in Australia going back several decades. The nature of that use and, in particular, whether it might reasonably be characterised as trade mark use for relevant goods or services, is effectively at the heart of the current opposition.
I note that the Opponent is the owner of the oldest pending or registered mark containing the precise words in question,[1] essential details of which are set out below:
Registration Number: 1449451
Priority Date: 20 September 2011
Classes:9, 16, 41, 43
Trade Mark: New Idea Test Kitchen
[1] I acknowledge in passing the existence of registration 663185 HAPPY CHEF – QUALITY ASSURED KITCHEN TESTED! & Device, which covers various food products in Class 29 and is owned by a third party, but confirm it is not of direct relevance to my decision.
For its part, the Applicant is the owner of the following two registrations:
Registration Number: 1450725
Priority Date: 27 September 2011 (same as opposed application 1450723)
Classes:16, 41, 43
Trade Mark: THE AUSTRALIAN WOMEN'S WEEKLY TEST KITCHEN
Registration Number: 1648133
Priority Date: 19 September 2014
Classes:16, 41
Trade Mark:
For the sake of completeness I mention the Applicant is also the owner of pending application 1590584 TEST KITCHEN in Class 43, which was divided out from (and shares the same 27 September 2011 priority date as), opposed application 1450723. Application 1590584 is currently facing objections under ss 41 and 44 of the Act, the latter based on the Opponent’s registration 1449451 New Idea Test Kitchen.
I heard the matter as a delegate of the Registrar of Trade Marks on 16 June 2015 in Sydney. Chris Burgess of Counsel, instructed by Peter Karcher and Sophie Clark of ClarkeKann Lawyers, appeared for the Opponent. Mr Burgess’ oral submissions were supplemented by written submissions emailed to both the Applicant’s attorney and me on 3 June. The Applicant was not represented at the hearing, opting to rely on written submissions prepared by Macek Rubetzki of Media Legal. Mr Rubetzki is “Corporate and Trade Marks Counsel of the Bauer Media Group companies in Australia,” (which group includes the Applicant), and his submissions were emailed to the Opponent’s attorneys and me on 10 June.
Grounds of Opposition, Onus and Standard of Proof
As mentioned, the SGP lists grounds corresponding to ss 41, 58A and 60 of the Act. Some weeks before the hearing, however, the Opponent’s attorneys advised that only the grounds based on ss 41 and 58A would be pressed. To succeed in its opposition the Opponent bears the onus of establishing at least one of these two grounds and I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[2]
[2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
Mr Burgess further confirmed in his written submissions that the Opponent’s “primary ground” was that under s 41 and that the s 58A ground was only pressed in the event that I found “the term TEST KITCHEN is capable of functioning as a trade mark that distinguishes the [Goods and Services].” As will become apparent, I have not so found and accordingly only the s 41 ground is discussed in this decision. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
The relevant date for assessing the registrability of the Opposed Mark under s 41 is the 27 September 2011 filing date of the opposed application (“the Filing Date”).[3]
Discussion
[3] Following Yates J in Apple Inc. v Registrar of Trade Marks (2014) 109 IPR 187 at [32]-[59].
Section 41
The ground based on s 41 of the Act is particularised in the SGP as follows:
The [Opposed Mark] is not capable of distinguishing the [Goods and Services] from the goods or services of other persons. The [Opposed Mark] is descriptive of the [Goods and Services]. Other traders will want or need to use the phrase “test kitchen” in the course of providing goods or services. The Opponent and other traders have used, over an extended period of time, and continue to use the phrase “test kitchen” in the course of providing goods and services of the kind applied for by the Applicant, and for similar goods and services.
As from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed s 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[4] Accordingly the repealed section remains relevant here and all references to s 41 hereafter in this decision are to the section as it stood prior to its amendment, as set out below:
[4] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50.
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.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(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.
Note: For goods of a person and services of a person see section 6.
(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.
Note 1: For goods of a person and services of a person see section 6.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(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.
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.
Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
The operation of Section 41
The operation of s 41 was analysed by Branson J in the leading case of Blount Inc v Registrar of Trade Marks[5] (“Blount”) as follows:
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.
[5] (1998) 83 FCR 50 at 56–7; 40 IPR 498 at 504–5. See also Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 per Sundberg J at [9], Phone Directories Company Australia Pty Ltd v Telstra Corporation Ltd [2014] FCA 373; (2014) 106 IPR 281 per Murphy J at [155]-[156] and, most recently, Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 (24 July 2015) at [26]-[38].
As mentioned in paragraph 10 above the Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus is effectively limited to satisfying me that the Opposed Mark is not sufficiently adapted to distinguish the Goods and Services as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3).[6] In this regard both parties agreed that, as Mr Rubetzki put it:
When assessing a mark for the purposes of s 41(3), it should be presumed that the mark is sufficiently adapted to distinguish unless the Registrar is satisfied otherwise. However, if it is necessary to consider the mark under ss 41(5) or (6), the applicant must demonstrate that the criteria referred to in those sub-sections are made out.
[6] See Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [26] to [29] and at [40] for a full discussion on this point.
Consideration of the Opposed Mark under section 41(3)
In accordance with Branson J’s analysis then, the first issue which arises for consideration is that under s 41(3), namely “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.” It was not in dispute that, in the well known words of Kitto J[7] from Clark Equipment Company v Registrar of Trade Marks[8] (“Clark”) referred to by both Mr Rubetzki and Mr Burgess:
[T]he question whether a mark is adapted to distinguish [is 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 - in the exercise, that is to say, of 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 - 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.
[7] In effect paraphrasing the words of Lord Parker of Waddington in Re W & G du Cros Ltd’s Application (1913) 30 RPC 660 that Kitto J had earlier (at 514) quoted with approval.
[8] (1964) 111 CLR 511 at 514. The case concerned possible registration of the claimed trade mark MICHIGAN in Part B of the then two part Register as a mark “capable of becoming distinctive” under s 25(1) of the now repealed Trade Marks Act 1955. Under s 26 of that Act a trade mark could not be considered distinctive unless it was “adapted to distinguish” the relevant goods or services.
More recently, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[9] (“Cantarella”) considered s 41(3) in some detail. In a joint judgment the majority of the Court (French CJ, Hayne, Crennan and Kiefel JJ) explicitly approved Kitto J’s above-quoted words[10] and went on to say at [70]-[71] (with original footnotes omitted and my emphasis added in bold):
Interpretation of s 41(3)
[70] In accordance with the principles established in [Mark Foy’s Ltd v Davies Coop & Co Ltd[11]] and restated in [Clark], [FH Faulding & Co Ltd v Imperial Chemical Industries Ltd[12]] and [Burger King Corporation v Registrar of Trade Marks[13]], determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied.
[71] As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.
[9] [2014] HCA 48 (3 December 2014); (2014) 109 IPR 154.
[10].Gageler J, in a separate judgment, ultimately reached a dissenting conclusion in the matter at hand, but did not disagree on the applicability of Kitto J’s above-quoted words.
[11] (1956) 95 CLR 190.
[12] (1965) 112 CLR 537.
[13] (1973) 128 CLR 417.
I have emphasized the words I have in the above quotation because, although Mr Rubetzki sought to rely on paragraphs 70 and 71 of Cantarella, he omitted those words from the quotation reproduced in his submissions. His submissions then go on to argue, incorrectly in my view, that given the presumption in the Applicant’s favour with respect to s 41(3),[14] “…there is ample scope for the Registrar to decide…there are no grounds to reject [the application]” and thus that the further enquiries indicated by ss 41(5) or (6), as the case may be, are unnecessary. In order to explain why I think Mr Rubetzki’s argument is flawed, it is I think useful to set out (with footnotes omitted, but original emphasis retained) his subsequent submissions apparently based on the quoted passage from [70] and [71] of Cantarella:
[14] See paragraph 16 above and s 33 of the Act.
38. In this crucial extract from the judgment, the High Court has indicated that it is only those words which are understood by the target audience as having a directly descriptive meaning in relation to the relevant goods (or services) which should not have a monopoly granted in respect of them. The court has also indicated that words which contain an allusive reference to the relevant goods (or services) are prima facie qualified for the grant of a monopoly.
39. [The Opponent’s] Submissions describe the Application as an attempt by [the Applicant] to “monopolise the common descriptive term ‘test kitchen’…”. However, as already noted, [the Applicant] and [the Opponent] are in broad agreement as to the meaning of the term TEST KITCHEN: “a physical kitchen equipped with cooking and food preparation equipment where recipes and cooking processes can be tested”.
40. [The Applicant] submits that the term TEST KITCHEN does not make a direct reference to the goods and services claimed in the Application, and does not have a “directly descriptive meaning” in relation to them. At best, any reference is an “allusive reference” and, in any event is far removed from those goods and services themselves.
41. [The Applicant] submits that the phrase TEST KITCHEN is exactly the sort of mark which contains the kind of “allusive reference” referred to by the High Court. The words “test kitchen” can only mean a physical kitchen, and in the context of the relevant goods and services claimed, TEST KITCHEN merely alludes to a process of recipe testing and development taking place in such a kitchen, and any reference to the [A]pplicant’s printed matter or claimed services is at most very indirect, tangential and remote.
42. Accordingly, on the application of the High Court’s test above, [the Applicant] submits that it is entitled to have its mark TEST KITCHEN registered in respect of those goods and services.
43. It is also notable that registration of TEST KITCHEN for [the Goods and Services] would have no effect on any trader’s ability to continue to use that phrase to describe “a physical kitchen equipped with cooking and food preparation equipment where recipes and cooking processes can be tested”, nor on any other descriptive use of that phrase.
44. Any attempt by [the Applicant] to assert such a monopoly would fail where that phrase was used descriptively in good faith by a third party. This is because s 122(1)(b) of the Act states that:
a person does not infringe a registered trade mark when:
…
(b) the person uses a sign in good faith to indicate:
(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services
45. Accordingly, the registration of [the Opposed Mark] would not offend the test referred to in [Clark] because there would be no prospect that a descriptive use of “test kitchen” would infringe [the Applicant’s] registration.
46. Having regard to these factors, and to the legal tests referred to above, [the Applicant] contends that TEST KITCHEN has sufficient inherent capacity to function as a trade mark in respect of printed matter, and the service of publishing, and all of the other services for which [the Applicant] seeks to register its mark.
47. On this basis, [the Applicant] submits that there is ample scope for the Registrar to decide, in accordance with s 41(3), that there are no grounds to reject [the Applicant’s] application to register its trade mark. Without such grounds, the presumption of registrability in s 33 must apply and the mark should proceed to registration.
48. However, if the Hearing Officer, as the delegate of the Registrar, is unable to decide the question (pursuant to s 41(4) of the Act), then for the reasons outlined above, [the Applicant] submits that the fate of the application should be determined pursuant to s 41(5), and not s 41(6).
There are two principal matters claimed in this submission with which I am unable to agree, which for convenience I will refer to as the “Cantarella issue” and the “infringement issue” respectively. Before discussing these, I note that there was no disagreement (indeed, were there any doubt, this is confirmed a number of times in both parties’ evidence), that the words “test kitchen” in their ordinary signification mean, and are widely understood to mean, as Mr Rubetzki put it, “a physical kitchen equipped with cooking and food preparation equipment where recipes and cooking processes can be tested”.
As regards the Cantarella issue, it is not the case, as Mr Rubetzki states at paragraph 38 of his above quoted submission, that “the High Court has indicated that it is only those words which are understood by the target audience as having a directly descriptive meaning in relation to the relevant goods (or services) which should not have a monopoly granted in respect of them”. Firstly, the Court was talking specifically here (in the penultimate sentence of [71]) about a “foreign word” being so understood by the target audience, in which case, (as with any words, whether English or foreign), if their “ordinary signification[15]…has ‘direct’ reference to the character or quality of goods [or services]” the words will not be prima facie registrable.
[15] Or as Kitto J originally put it in Clark at 504, “the signification which they ordinarily possess”.
More generally, as the lines from [71] of Cantarella omitted from Mr Rubetzki’s submission which I emphasized above state, whether or not a trade mark consisting of such a word or words has a “direct” reference of this kind is but one reason why a mark may not be considered inherently adapted, or sufficiently inherently adapted, as to be prima facie registrable for particular goods or services. As I noted in Sustainable Living Fabrics Pty Ltd v Instyle Contract Textiles Pty Ltd[16] (“FARM TO FABRIC”), a decision referred to several times by Mr Burgess in his submissions, Lindgren J pointed out in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks[17] at [98] that:
…while [Clark] establishes that in … particular circumstances … a mark will not be inherently adapted to distinguish, the case does not purport to identify all the circumstances in which a mark will be (or, for that matter, will not be) inherently adapted to distinguish. [Clark] establishes one negative test, the failing of which means that a mark is not inherently adapted to distinguish.[18]
[16] [2011] ATMO 66; (2011) 94 IPR 186 at [30].
[17] (2002) 122 FCR 494; 56 IPR 30.
[18] See also Hearing Officer Thompson’s remarks in the same vein in Kraft Foods Australia Pty Ltd v Mars Australia Pty Ltd (2012) 97 IPR 52 at [21].
Amongst those additional circumstances identified by the Court in Cantarella at [71] with, as I see it, particular relevance to assessing the Opposed Mark’s inherent adaptation to distinguish, are its laudatory nature and the fact that, given the agreed and widely understood meaning of the words “test kitchen,” it has either lost, or most likely never had, “the requisite distinctiveness to start with.” As discussed further below, Mr Burgess thus, correctly in my view, advanced several separate, albeit inter-related, reasons, in addition to its arguably directly descriptive character, as to why the Opposed Mark lacked sufficient adaptation to distinguish the Goods and Services to qualify for registration on a prima facie basis.
As to the Opposed Mark’s laudatory nature, this to my mind is closely bound up with the second principal matter raised by Mr Rubetzki with which I cannot agree, the infringement issue. In this regard I concur with Mr Burgess’ submission that in view of the agreed “ordinary signification” the words “test kitchen” have, they carry with them a certain estimable quality in relation to the Goods and Services which relevant consumers or other traders would no doubt perceive as desirable. Essentially the Goods and Services provided by reference to the words in question are likely to be seen, perhaps subconsciously by many consumers, though not necessarily so, as being reliable and trustworthy, having been proved in a real test kitchen. Referring to my decision in FARM TO FABRIC at [30]-[34] and the cases there mentioned, Mr Burgess noted that the Opposed Mark could reasonably be said to share that characteristic with the claimed trade mark MICHIGAN in relation to cranes, the matter with which Kitto J was concerned in Clark. As his Honour put it at 516-517 (in words harking back to those used at 514 quoted in paragraph 17 above regarding infringement):
…it seems to me impossible to conclude that there is no likelihood of other traders, in the ordinary course of their businesses and without any desire to get for themselves a benefit from the [trade mark applicant’s] reputation, wishing in advertisements and otherwise to describe (e.g.) their power cranes from Michigan as Michigan power cranes. They may well wish by such means to take legitimate advantage of a reputation which they believe or hope that the State of Michigan possesses among Australians for the quality of its manufacturing products, and it would be contrary to fundamental principle to grant a registration which would have the effect of denying them the right to do so by using the name of the State. It is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as “made in Michigan” or in some other way indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business.
As Mr Burgess also highlighted in connection with the infringement issue, the parties are competitors in the magazine publishing business and, he argued, the Opponent should not be put in a position where it would need to obtain legal advice on, or to “second guess”, whether or not the Applicant might consider the Opponent’s use of the words “test kitchen” for what the Opponent perceived as a legitimate descriptive reason infringed a putative registration of the Opposed Mark. As he noted in this regard, the fact that the Applicant was currently claiming the Opposed Mark was entitled to registration on a prima facie basis and the Opponent was of the opposite view, was of itself an indication of the uncertain position the Opponent and other traders in similar goods or services to those covered by the opposed application were likely to find themselves if the opposed application were to proceed to registration.
That said in relation to the Cantarella and infringement issues raised by Mr Rubetzki, I return to the key matter of the Opposed Mark’s inherent adaptation to distinguish the Goods and Services and Mr Rubetzki’s above quoted submission that, “At best, any reference is an “allusive reference” and, in any event is far removed from those goods and services themselves.”
Mr Burgess advanced several cogent reasons in his submissions why, based on the evidence, the Opposed Mark should not be seen as merely allusive and why, at the very least, it must fall for consideration under s 41(5) of the Act. However, his principal submission, referring to Note 1(a) to s 41(6) of the Act, was that the words “test kitchen” should in fact be seen as having “‘direct’ reference to the character and quality of [the Goods and Services],” being the primary matter discussed by the Court in Cantarella at [71] relevant to the trade marks then under consideration. He submitted the Opposed Mark should accordingly be seen as having no inherent adaptation to distinguish the Goods and Services and thus that s 41(6) of the Act was applicable. Note 1(a) to s 41(6) was reproduced in context in paragraph 14 above, but for ease of reference is again set out below (with my emphasis added):
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
Mr Burgess submitted that use of the words “test kitchen” in relation to the Goods and Services was an indication of, in particular, their “quality” (the recipes and cooking tips being reliable, having been tested in a real kitchen), “intended purpose” (the publications and services claimed featuring such reliable recipes and tips), and/or “some other characteristic” (such as the actual subject matter of the books, magazines or periodicals claimed[19] or the actual location of the services claimed). As he put it in his written submissions:
[19] Mr Burgess relied on a number of cases in support of this point, including The Chef Trade Mark [1979] RPC 143 (THE CHEF), Intermed Communications Inc’s Application [1985] AIPC 90-256 (NURSING 79); Crain Communications Inc’s Application (1997) 38 IPR 589 (AUTOMOTIVE NEWS) and ACP Syme Magazines Pty Ltd’s Application (1999) 46 IPR 633 (STREET MACHINE), where registration was refused for printed matter in Class 16.
30. The term TEST KITCHEN is used on a day to day basis in the food industry. As submitted above, it means: a kitchen that is used to develop and test recipes and cooking techniques. It is the normal way of describing the place where recipes, cooking tips and techniques are developed and tested. There can be no dispute about this, having regard to the evidence.
31. See e.g:
(a) The declaration of Ms Northwood, Food Director of New Idea. Ms Northwood has over 34 years’ experience in the food industry. Her evidence is that “the term test kitchen refers to a kitchen used for the process of testing food and developing and enhancing recipes”: Northwood [9]. She continues: “There are a number of test kitchens in various sectors of the food industry. Test kitchens are owned and operated by large companies and magazine publishers, but also by individuals who are food writers whose occupation is developing recipes. Throughout my career in the food industry since 1980 my experience has been that the term ‘test kitchen’ has been used in day to day parlance and communication across the food industry whether it be in letters, emails or magazine articles. It is a term that has been used in magazine articles for years. It is a term that I have used and continue to use on an almost daily basis in office memos and internal staff communications since the early 1980’s”.
(b) The declaration of Ms Allston, Food Editor of that’s life! Magazine. Ms Allston has over 31 years’ experience in the food industry. Similarly to Ms Northwood, she explains that a “test kitchen” is “a kitchen fitted out and equipped with domestic appliances and utensils, essentially used to make or test recipes until a satisfactory result is achieved”: Allston at [3]. She adds at [7]: “In my experience working across media, publishing and as a cooking facilitator, readers and members of the public, as well as people from within the food industry, recognise the term “test kitchen”. Even to a novice, it means a place where recipes are created by experienced cooks, chefs, home economists and food writers…”.
(c) The declaration of the Applicant’s Trade Marks Counsel, Mr Rubetzki, who annexes the dictionary definitions of “test” and “kitchen”. He concludes, correctly: “a ‘test kitchen’ is a physical kitchen equipped with cooking and food preparation equipment where recipes and cooking processes can be tested’. Rubetzki [1], [14]-[15], [23].
(d) The Wikipedia entry for “Test Kitchen” at Clark 2, Annexure 13A. Relevantly, this reads: “A test kitchen is a kitchen used for the process of developing new food. On the largest scale, they are run by the research and development departments of large companies in the food industry. Other test kitchens are owned by individuals who enjoy the craft of developing new recipes”.
32. Other traders are very likely to desire to use the term TEST KITCHEN in connection with the designated goods and services for the sake of this ordinary signification.
33. More particularly, the publishers of cook books, magazine cooking columns, recipes and cooking tips (etc) are very likely to want to use the term TEST KITCHEN to
(a) identify the physical place where their recipes and cooking tips have been developed and tested; and
(b) assure readers that their recipes and tips constitute credible cooking advice that has survived the rigors of a “test kitchen”. Put bluntly, consumers do not want to be Guinea Pigs when it comes to culinary matters.
34. The legitimate desire of other traders to use the words “test kitchen” in this way is established by
(a) the plain English meaning of the term “test kitchen”;
(b) the direct evidence of the witnesses;
(c) the documentary evidence of the opponent having used the term TEST KITCHEN in this way for many years, before and after the priority date; and
(d) the documentary evidence of other traders having used the term TEST KITCHEN in this way, again for many years, before and after the priority date.
Paraphrasing to some extent what I said in FARM TO FABRIC, I do accept that a trade mark need not be entirely unsuggestive in relation to the goods and services it covers and that a question of degree is involved in assessing its inherent adaption to distinguish them. Here, nevertheless, I am satisfied by the evidence of both parties that the words “test kitchen” constitute a known phrase in the publishing and culinary industries and that the phrase has a transparent, indeed undisputed, descriptive meaning referring to a physical kitchen where recipes are tested. In my view the Opposed Mark is thus not simply “allusive” in respect of the Goods and Services in the same way as, say, TUB HAPPY is for easily washable clothing[20] or PERFECTLY YOU is for cosmetics.[21] It strikes me as a phrase “apt for normal description”[22] in relation to the Goods and Services or in relation to a significant characteristic[23] those goods and services might possess. I am accordingly not satisfied that it contains sufficient inherent adaptation to distinguish the Goods and Services from the similar goods or services of other traders as to qualify for registration on that basis alone.
[20] Mark Foy’s Limited v Davies Coop & Company Limited (1956) 95 CLR 190.
[21] Wella Aktiengesellschaft v Registrar of Trade Marks (1995) 33 IPR 374, per Lehane J at 377.
[22] See American Screw Co.’s Appn [1959] RPC 344 (UK) at 346 (Torq-set); Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (CRANBERRY CLASSIC) per Wilcox J at [34].
[23] Cf Note 1 to s 41(6) of the Act.
Consideration of the Opposed Mark under ss 41(5) and (6)
In such circumstances, as mentioned, s 41(4) of the Act indicates ss 41(5) or (6) applies, with the Applicant bearing the relevant onus of proof. As indicated,[24] Mr Rubetzki submitted that s 41(5) rather than s 41(6) was applicable here, the essential difference being that in the former case use (whether before or after the Filing Date), intended use, or “any other circumstances,” may be considered in assessing the mark’s capacity to distinguish the Goods and Services at some future time and in the latter case the Applicant needing to establish that because of the Opposed Mark’s use before that date it had by then become actually distinctive of them.[25]
[24] See paragraph 48 of Mr Rubetzki’s submissions quoted at [19] above.
[25] See for example Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 (24 July 2015) per Yates J at [26]-[38] for a full discussion of the distinction.
Mr Rubetzki’s submissions go on to say that, “[the Applicant] contends that there is ample evidence of its use of TEST KITCHEN as a trade mark in respect of [the Goods and Services],” without actually pointing to any specific use shown in the evidence before me. He also refers to prior registrations in Class 16 for marks owned by third parties, including The Kitchen, WORLD KITCHEN, GLOBAL KITCHEN, ethnic kitchen and taste kitchen as possibly relevant, (I assume), “other circumstances” I might take into account in terms of s 41(5)(a)(iii) of the Act.
Dealing with this latter issue first, for a number of reasons I do not find the existence of these earlier registrations at all persuasive. Apart from the apparently different character of the marks themselves, I do not know the circumstances which led to their acceptance, nor is there any evidence before me, as there is with the Opposed Mark, of how the marks may have been used (if at all) before or around their filing dates. Importantly, too, none of the marks identified was opposed and thus none has undergone the “detailed adversarial examination” inherent in opposition proceedings referred to by French J in Registrar of Trade Marks v Woolworths Limited.[26]
[26] (1999) 45 IPR 411 at [34].
As regards whether s 41(5) or s 41(6) is applicable in this case, I think the Opposed Mark falls rather under s 41(6). However, if I be wrong in this view, I note that whether the Opposed Mark is considered not to any extent inherently adapted to distinguish the Goods and Services, or arguably contains some degree of inherent adaptation as the Applicant contends, is not critical to my decision. This is because the “combined effect” of the use (whether before or after the Filing Date), intended use (of which there is no evidence) and other circumstances (as discussed above) relied upon by the Applicant is in any event insufficient to satisfy me the mark does or will distinguish the Goods and Services as required by s 41(5), let alone to establish that it did distinguish them as at the Filing Date as required by s 41(6).[27]
[27] See Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2011) 93 IPR 513 at [16]-[20], where Murphy J reached a similar conclusion in relation to the trade mark YELLOW.
In this regard Mr Burgess provided a detailed critique of the evidence of use relied on by the Applicant, supplemented by a comprehensive summary of the many instances of descriptive use of the words “test kitchen” by the Opponent, its predecessors in title and third parties going back several decades as contained in the Opponent’s evidence. I do not think it necessary here to comment specifically on all of his submissions concerning the parties’ evidence, other than to say that I have little hesitation in agreeing that none of the use shown, voluminous though it may be, is on the face of it use as a trade mark, arbitrary capitalization of the words “test” and/or “kitchen” notwithstanding. Moreover, none of the use shown appears to be in relation to the Goods and Services as such in any event. That said, the essence of what Mr Burgess had to say on the use relied on by the Applicant can be seen from the following extracts taken from his written submissions (with original emphasis retained):
44. First, the use by the applicant’s predecessors of the term TEST KITCHEN has been descriptive use of the term, not use as a trade mark.
…
46. Consider, e.g., the following examples that are put forward by the applicant of its usage of the term TEST KITCHEN in the Australian Women’s Weekly Magazine:
(a) 9 September 1964 at Rubetzki 1, MR A-1: “We regret that owing to shipping delays our new cookery book, “Step by Step Cookery”, by Margeurite Pattern in conjunction with Lela Howard, of our Test Kitchen, will not be available until the end of this month”.
(b) 11 November 1964 at Rubetzki 1, MR A-2: “ROSS complained that he didn’t need a full course … So he took a list of questions to our Test Kitchen”.
(c) 23 August 1978 at Rubetzki 1, MR A-6: “Every recipe has been tested in the Weekly’s Test Kitchen and the author is our Cookery Editor, Ellen Sinclair”.
(d) 20 February 1980 at Rubetzki 1, MR A-7: “Cooking queries flood in to our Test Kitchen…”.
(e) September 2001 at Rubetzki 1, MR A-10: “From the Weekly’s World-Famous Test Kitchen”.
(f) March 2004 at Rubetzki 1, MR A-12: “Cooks can trust the experience of The Australian Women’s Weekly Test Kitchen, which has been operating since 1948. All our recipes are triple-tested, ensuring you’ll have success every time”.
47. This is precisely the same kind of descriptive usage of the term TEST KITCHEN that other traders have, and legitimately want and need to, engage in. It is not evidence of relevant trade mark use. The position is not relevantly different to Sports Break Travel Pty Ltd v P & O Holdings Ltd (2000) 50 IPR 51 at [24]. In that case, the applicant’s use of “SCHOOLIES” “for its meaning as a word” could not establish distinctiveness under s 41(6).
48. The error in the applicant’s reliance on such usage was identified by Justice Jacobs in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 302. His Honour said:
There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example; no matter how much use a manufacturer made of the word “Soap” as an unsupported trade mark for soap the word would not be distinctive of his goods.
49. See further Section 4.8 of Pt 23 of the Examiner’s Manual. This points out, in the context of marks frequently used alongside other marks, “If the context of the use demonstrates that the trade mark is always used descriptively, even a very large amount of evidence of use is unlikely to support the applicant’s case”.
50. Secondly, the applicant’s evidence includes many examples of the words TEST KITCHEN being used as part of composite expressions or logos that additionally include the Women’s Weekly logo, house or master branding.
51. See, for example:
(a) 23 August 1978 at Rubetzki 1, MR A-6: “Every recipe has been tested in the Weekly’s Test Kitchen…”.
(b) September 2001 to April 2004 at Rubetzki 1, MR A-10, 11 13: “From the Weekly’s World-Famous Test Kitchen”.
(c) March 2003 at Rubetzki 1, MR-12: “Cooks can trust the experience of The Australian Women’s Weekly Test Kitchen, which has been operating since 1984”.
(d) Early 2011 at Rubetzki 1, MR-20: WOMEN’S WEEKLY test KITCHEN Device logo.
(e) September 2005 at Rubetzki 2, MR-24: “WW/from the test kitchen”
(f) September 2006 at Rubetzki 2, MR -28: “WW/test kitchen”.
52. The presence of logo, house and master branding elements of the above kind substantially alters the identity of the mark TEST KITCHEN: [the] Act, s 7(1). As a result, expressions such as THE WEEKLY’S TEST KITCHEN are different trade marks altogether. This is acknowledged by the applicant’s decision to seek to register both the opposed mark and THE AUSTRALIAN WOMEN’S WEEKLY TEST KITCHEN, as independent marks.
…
55. Thirdly, the applicant’s evidence relies heavily on use of the term “test kitchen” as a magazine column sub-heading. The term “test kitchen” appears to have been used this way since about the mid 2000s.
56. The January 2011 edition of The Australian Women’s Weekly Magazine at Rubetzki 2, MR-41 provides a good example. Here, the term “test kitchen” appears as a magazine column sub-heading under “Home & Food”. The other sub-headings in this section include “our six best salads”; “fruity desserts”; “barbeque meals”; “Homemade gelato”; “festive leftovers”, “Food news” and “Home hints”.
57. None of these content “sub-headings” constitute examples of the use of a trade mark. That is to say, they are not signs that are used to indicate trade origin. To the contrary, what the applicant’s predecessor has done is use an ordinary descriptive term to organise a magazine’s content according to its subject matter. Such usage of the term TEST KITCHEN is not use as a trade mark, and cannot establish that term has become distinctive of the applicant’s goods and services under s 41(6).
…
59. Fourthly, there is no evidence the applicant has promoted the term TEST KITCHEN as a trade mark…
To conclude, I find that the Opposed Mark contains little or no inherent adaptation to distinguish the designated goods and services and that the application accordingly falls for consideration under ss 41(5) or 41(6) of the Act. In my estimation s 41(6) should apply. However, in either case the onus is then on the Applicant to demonstrate significant use of the Opposed Mark as a trade mark and for relevant goods and services, as indicated under both of those provisions. This it has not done.
I therefore find that the Opponent has established its s 41 ground of opposition.
Decision
Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…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.
I have found the opposition to be successful on the ground raised pursuant to s 41 of the Act. I accordingly refuse to register trade mark application number 1450723.
Costs
In the event of success, Mr Burgess sought costs on the Opponent’s behalf. As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
5 August 2015
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