Pacific West Foods Australia P/L

[2008] ATMO 47

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1133777(29) - PANKO- in the name of Pacific West Foods Australia Pty Ltd.

Delegate:

Rowena Beal

Representation:

Applicant: Stephen Burley of  Counsel, instructed by Clinch Long Letherbarrow

Decision:

2008 ATMO 47

Trade Mark considered under section 41 of the Trade Marks Act 1995, submissions insufficient to overcome grounds under section 41(6). Application rejected

Background

1. Application 1133777 was filed on the 5^th September 2006 in the name of Pacific West Foods Australia Pty Ltd (‘the applicant’). The application consisted of the trade mark as shown below:

1. The specification of goods claimed in class 29 was as follows:

   Fish, including cooked fish and chips (potatoes); fresh, frozen and cooked seafood and seafood products; seafood including fish, prawns, shrimp, lobster, crab, scallops, crayfish and other crustacean, oysters, mussels, squid, octopus, abalone; cooked meat, meat products and extracts poultry and game; dried and cooked fruit and vegetables

2. An examiner of trade mark objected to the trade mark’s registration and raised a ground for rejection under subsection 41(5) of the Trade Marks Act 1995 (‘the Act’). In support of the grounds for rejection the examiner stated that the word PANKO was a breadcrumb coating used on fried foods and the word therefore had little inherent capacity to distinguish the goods of the application. The applicant’s response included 11 letters from various individuals within the food industry stating that the term PANKO was unknown to them until they became aware of the applicant’s goods. Additional submissions went to the fact that the trade mark was a stylised word, and the word PANKO was not defined in the Macquarie Dictionary 3^rd Ed.. The applicant further submitted that bread, and presumably breadcrumbs, fall in class 30 of the international classification system and are therefore not covered by the current application. The applicant referred to the results of a Google search which did not show any uniform claim by traders to the use of the word PANKO in relation to the goods at the date of the search.

3. The examiner considered the submissions, however, a second adverse report was issued. The examiner explained that she was relying on references that described PANKO as a Japanese word for a type of breadcrumb. Examples from a Google search were referred to in her response. She invited the applicant to file evidence of use or refine their specification of goods to exclude goods that were crumbed or breaded.

4. The applicant responded that the examiner’s offer to refine the specification was unacceptable and a hearing on the matter was requested. The matter came before me as a delegate of the Registrar on the 11^th April 2008 in Sydney with submissions by Mr Stephen Burley of Counsel.

Submissions

1. The applicant began its submissions with a reiteration of the points made in their responses to the examination reports. It submitted that the word was the equivalent of an invented word as it did not sound Japanese and had no direct connotation to Australians unfamiliar with the Japanese language. Further, there was no principle of trade marks law that would deny inherent distinctiveness to a foreign word per se. The applicant took issue with the examiner’s claim that PANKO, as a matter of fact, was a word used in Australia with a particular meaning in relation to the goods and claimed that the material filed during examination, being the 11 letters from persons in the food industry, demonstrated that the term was unknown as a descriptive term.

2. The applicant then turned to the references relied on by the examiner, claiming these were largely foreign sources or that the need to supply a translation of the term indicated that in its foreign signification the word had no meaning to the average Australian. The applicant then referred to the decision of Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 and drew my attention to the fact that this case highlights the requirement that it is the ordinary meaning of a word and its descriptive relevance for the customer that is significant. If the word ‘does not form part of the common heritage of the English language, then it is clearly capable of distinguishing’.

3. The applicant also referred to the context in which use occurs as being a relevant consideration and draws on the words of the judge in Mark Foy’s Ltd v Davies Coop and Co Ltd (1956) 95 CLR 190 at 195 where it is necessary to ascertain the probability of ordinary persons understanding the words as applied to the goods.

Discussion

1. Section 41 has been given judicial consideration by Branson J in Blount Inc v The Registrar of Trade Marks (1998) 40 IPR 498. The matter to be considered here, in light of Blount, is:

   ·The capacity of the word to distinguish the goods; and, if the foregoing lacks capacity to distinguish the goods,

   ·The capacity of the trade mark, considered as a whole, to distinguish the goods; and, if necessary,

   ·The extent to which the trade mark has been used.

2. Inherent capacity to distinguish is assessed according to the test established 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 connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.”

3. Kitto J later said in F H Faulding & Co Ltd v Imperial Chemical Industries of Australia & New Zealand Ltd  (1965) 112 CLR 537 at 555:

   “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.”

4. As indicated by Gibbs J in Burger King Corp v Registrar of Trade Marks (1973) 128 CLR at 424 inherent adaptation is dependent on the nature of the trade mark itself and cannot be changed by use or otherwise. And again Isaacs J in Thomson v B Seppelt & Sons Ltd (1925) 37 CLR 305 at 312 ‘is the trade mark instantly adapted to distinguish the proprietor’s goods in his future trade?’

5. I note that the ‘likelihood’ of other persons thinking of the word and requiring its use in connection with the goods is not to be restricted to a consideration of past or even present usage. The terms of section 41 are expressed in such a way as to include a consideration of the given marketplace in the future, and the anticipated behaviours and expectations of consumers and traders within the context of notional use. If inherent adaptation were only to be assessed on the basis of current usage in the marketplace then the first to apply for registration of the name of a new but little known type of product would have a clear advantage. If it is a natural and obvious word to choose to describe the goods, regardless of whether there are many other traders of similar goods or just a few, then the word is not qualified to function as a trade mark.

6. Firstly I must consider how the registrability of a foreign word should be assessed. The hearing officer in Re Application by Adrian Barr (1990) 18 IPR 196, considered that it had been ‘long established’ that where an objection to the registration of a trade mark existed in English, a similar objection should be made to any foreign equivalent. This matter has been given longstanding judicial consideration in law. In Burgoyne’s Trade Mark (1889) 6 RPC 227 an aboriginal word for ‘choice’ OOMOO was considered in relation to wines and spirits. Chitty J came to the conclusion that, to an ordinary Englishman, as the foreign language was obscure, the translation was largely ignored because it would be seen as a ‘fancy’ or invented word, and the prospect of the goods reaching speakers of the language was remote. However this same judge made a distinction between absence of meaning and ignorance of meaning in Davis & Co. v Stribolt  & Co. (18889) 6 RPC 207 when considering the word BOKOL, a Norwegian and Swedish word to describe a type of beer;

   ‘But to say that every word is a fancy word because it is unknown to an average Englishman would be plainly to lay down a proposition which could not be for a moment maintained. There are many good English words descriptive of articles which are unknown to an average Englishman, taking rather a high standard.’

7. The conclusion in that case was that the meaning of the Scandinavian word was not so obscure that it could be ignored and that ignorance of the meaning was not in itself sufficient to establish that the word was inherently capable of functioning as a trade mark. This view also found support in the SOLIO case, Eastman Photographic Materials Co. Ltd’s Appn (1898) 15 RPC 476, where it was found that a foreign word could not be considered invented simply because it had not been current in the English language.

8. The Appointed Person in EL CANAL DE LAS ESTRELLAS trade mark [2000] RPC at 298 expanded on this view further;

   ‘ ..a foreign word is not liable to be regarded as meaningless simply because people are unfamiliar with it. I think ….the word must also be sufficiently obscure to justify the conclusion that the meaning it possesses elsewhere should be ignored for the purpose of determining whether it is registrable in the United Kingdom.’

If a word is sufficiently obscure that it currently has no meaning to the ordinary Australian consumer, nor is it reasonably likely to, then other Australian traders would not be denied the use of a legitimate description for their goods.

1. Turning to an assessment of the word PANKO in light of these considerations, the applicant has argued that the word is little known in Australia and has no direct connotation to Australians unfamiliar with the Japanese language. As such, (the argument goes) the word should be treated as an invented word. I have considered the applicant’s submissions but I cannot agree with this view. Clearly the word cannot be considered as invented simply because at the date of application it did not appear in a dictionary of Australian usage. The applicant has stated the word does not appear in the Macquarie Dictionary 3^rd Ed., however, it is defined in Kenkyusha’s New Japanese-English Dictionary, 4^th Ed., Kenkyusha, Tokyo, 1974, as follows:

pan-ko  n. bread crumb; crumbs (of bread); crumb.

1. Similar definitions are to be found in several online Asian language dictionaries such as Jim Breens WWWJDIC Japanese dictionary available through the Monash University site ( The online Korean dictionary Babylon ( provided the following definition;

   ‘Panko is a variety of breadcrumb used in Japanese cuisine as a crunchy coating for fried foods such as tonkatsu. Panko is made from wheat bread, but it has a crisper, airier texture than most types of breading found in Western cuisine. This is due to the fact that the crumbs are elongated and sharper, and no crusts are used in their production. Outside Japan, it is becoming more popular for use in Asian and non-Asian dishes, and is often available in Asian markets or specialty stores. It's also available in many large supermarkets. Panko is produced worldwide especially in Asian countries including Japan, Thailand, Taiwan and Vietnam. ‘

2. This definition is also supported by a number of other references from the US and UK. For example, a US publication in the well known ‘..for Dummies’ series, uses the term as follows[1];

   ‘Using panko (extra crunchy Japanese breadcrumbs) when deep-frying.

   The following recipe calls for breadcrumbs – a special kind called panko that you can find in Asian grocery stores. They’re extra-crunchy, white-bread based breadcrumbs that are very different from regular grocery store breadcrumbs, so do not substitute.’

   [1] Cooking Around the World All-in-One For Dummies, (2003) Published by Wiley Publishing Inc. in US and Canada

3. There are two issues for consideration with foreign language trade marks, the first being the translation of the word and how it is or will be understood by the population. Japanese is a modern language that is widely understood and spoken in Australia, particularly since the 1970s. Japan is a major trading partner of Australia, with both countries party to several bilateral and multilateral agreements on a range of trade issues. Both countries are currently negotiating on a Free Trade Agreement which will increase the movement of goods between the two further.  The Japanese language is spoken and understood by a significant proportion of the Australian population, especially those who travel, do business in Asia or have contact with tourists here. The rise in tourism between Australia and Japan over recent decades[2] has resulted in language training being offered through schools, higher education institutions and workplaces where there is contact with native speakers. I cannot ignore the fact that there are a substantial number of people resident in Australia, augmented by large numbers of visitors each year, who are fluent enough in Japanese to be aware of the translation.

   [2] Japan was the third largest source of tourism for Australia in 2007 according to the Department of Foreign Affairs and Trade.

4. However, there is no requirement that a foreign word must always be examined for registrability by reference to the meaning in translation. The second issue to consider in relation to foreign language trade marks is whether the word PANKO itself will, at some point if not currently, connote a specific meaning to potential consumers. This is the case even where consumers may not be fluent in language but can be expected to have an appreciation of some of the common specialised words of the language, for example, cookery terms. This effect may come about through several ways. The rise of Japanese food as a cooking style over the last decade or so, both as a specific type of food and as an influence on the Australian diet, has led to a rise in the availability of ingredients. These are sometimes sold through specialists stores but increasingly there are aisles in general supermarkets where such ingredients are available.

5. In addition, consumers are increasingly sophisticated and global in outlook as they travel more frequently in foreign countries, are exposed to media where international trends in cooking and food are frequently shown, and use of the internet for researching and purchasing specific goods online is increasingly common. International trade is encouraged and with it an increase in the availability of goods marketed under their foreign name. In addition, it is common for goods to bear descriptions and ingredient lists in several languages where they are imported or exported across borders. The increasing sophistication of consumers results in an increased understanding and use of the correct name for various items. For instance, consumers will understand the difference between cheeses labeled mozzarella and brie, and will ask for goods by their specific name to be used for a specific purpose. In such circumstances, consumers could be expected to become more familiar with the name of the goods themselves rather than relying on a translation. An example of this would be the use of the word ‘sushi’ which was virtually unheard of in the general Australian population at one point but is now a well understood and commonly used term without recourse to a translation.

6. In the current case, the ordinary buyer of these goods would be cooks and chefs, restaurants, commercial kitchens both Asian and non Asian, and the domestic shopper purchasing food items through the usual supermarket and grocery outlets. These customers may range from being quite knowledgeable about the food industry to those with a passing interest in food items.

7. The test to be applied, as outlined in subsection 41(3), is whether the word PANKO is inherently adapted to distinguish the goods of this application, ie, is the inherent nature of the word such that other traders would not, without improper motive, need to use the word to describe their own similar goods? Considering the current use in Australia is one way to determine this but if a product is unknown in the marketplace then relying solely on this type of assessment may give an inaccurate impression. Looking to use in similar markets overseas can also be appropriate, particularly those such as the US and UK with their multilingual populations and diverse culinary habits.

8. The question then is not a matter of deciding if the word has been used in the past, or even if it is currently used, but rather, is it inherently adapted by reason of not being an obvious or natural choice for a trader selling the goods of the application? Where the word is a natural and obvious description to use to refer to specific goods with particular characteristics, as appears to be the case here, then it is clear the word is likely to be required by others who are or will deal in those goods. Use in a descriptive sense in similar overseas markets is sufficient to indicate that this pattern of usage in Australia is highly likely at some point after the product is available on the market. I therefore consider that at the date of application, the word PANKO possessed no inherent capacity to distinguish the goods whatsoever.

9. I refer to the Hanlon J’s comments in Re Torstein Ropeid & Anor (1986) AIPC 90-42 where the word LOPI, an obscure Icelandic word describing the particular wool produced from Icelandic sheep:

   ‘I do not think the fact that Icelandic is little known and even that the word is obscure in Icelandic is of any significance in the face of the evidence that ‘lopi’ is used as the name of the relevant goods both in Iceland and elsewhere, including Australia. I consider that LOPI falls squarely into the category of words such as EUTECTIC and even GRAMOPHONE as the only appropriate, available and used description or name of the relevant goods, notwithstanding the fact that other longer or more complex technical descriptions may also be relevant.’

1. The applicant has pointed out it is not seeking to register the word in relation to breadcrumbs in class 30 but rather in relation to prepared foods in class 29, however, this does not assist in this case. If other traders wish to describe their products as being coated with PANKO, or as PANKO style, then the use of the word PANKO is unavoidable as it is the most appropriate term to use to describe the goods. Consequently, the relevant consideration therefore falls under subsection 41(6) rather than 41(5).

2. In conducting my own research I have found numerous references to the term in the current menus of Australian restaurants and cafes, and have found offers to trade in the goods from several Australian online retailers. I have also found recipes utilising PANKO as an ingredient on such major sites as the Australian Broadcasting Commission and other popular cookery programme sites. I can find in none of these sites a reference to the word PANKO as being a trade mark of the applicant or, indeed of any particular company. In many instances I have found the word is clearly used in a descriptive sense to refer to a coating on foods, including seafood. The word is employed in a manner which utilises its natural and ordinary meaning as part of the Japanese language. The word is used both on its own and also often with an explanation that the term refers to Japanese style breadcrumbs. Many of these references are undated and are likely to post-date the filing date of the application. However, this pattern of usage post filing would indicate that the use observed in other parts of the world is being followed by Australian consumers.

1. The applicant has provided letters from members of the trade but these are not convincing. In light of my earlier conclusions I consider that this informal evidence simply shows that the goods are associated with the applicant because at the time of writing the applicant was one of the few importers and/or distributors of the goods in Australia and not because the word functioned as a trade mark and distinguished the goods of the applicant. In addition, the lack of evidence that the applicant actually applies or promotes the word as a trade mark, or that there is an alternative description of the goods in use on their product, does not assist the applicant here. Neither does the claim that the trade mark is a stylised word. The styling of the letters appears commonly used in the packaging of similar goods to indicate an Asian flavour or theme to the product and I would assess the use of such a font as adding nothing to the ability of the trade mark to distinguish the goods.

2. When used in relation to the claimed goods it would appear that the word describes the goods as being coated or crumbed. As at the priority date of the application the word PANKO was not inherently adapted to distinguish the goods of the applicant as it was a natural and obvious description to use in relation to the goods claimed. In addition I think it likely that consumers will increasingly use and understand the term without need to refer to a translation. I am satisfied there are grounds for rejection under subsection 41(6) of the Act.

3. No formal evidence or special circumstances have been brought to my attention to demonstrate that the trade mark does in fact distinguish the goods of the application. Subject to an appeal from my decision, I reject application 1133777 under section 33 of the Act.

Rowena Beal

Senior Examiner

Trade Marks & Designs Hearings

25 June 2008