Paramount International Export, Ltd - [2009] ATMO 94

TRADE MARKS ACT 1995

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

Re:Trade mark application number 987111(32) - FIJI- in the name of Paramount International Export, Ltd

Delegate:

Iain Thompson

Representation:

Applicant: Cynthia Cochrane of counsel, instructed by Allens, Arthur, Robinson

Decision:

2009 ATMO 94

S33 – section 41 grounds for rejection – subsection 41(6) – discussion of evidence – ten months of use before priority date – discussion of reputation and acquired distinctiveness – application rejected

Background

1. In this matter, Paramount International Export, Ltd., of Los Angeles, California, (‘the applicant’) has applied to register a trade mark, current details of which appear below:

Application No: 987111

Priority Date: 2 February 2004

Goods:Class: 32 Natural spring and artesian water for drinking

Trade Mark:

(‘the trade mark’)

2. During examination, an examiner reported that there are grounds for rejection in terms of section 41 of the Trade Marks Act 1995 (‘the Act’) because the word FIJI lacks inherent capacity to distinguish as it is the name of an island country in the Pacific.

3. The applicant submitted evidence of the use of the trade mark and the examiner again reported, saying:

I have considered your statements in rebuttal of the objections raised in the first report issued in this matter. I have also considered the evidence provided.
I am downgrading my objection from subsection 41(6) to an objection under subsection 41(5) of the Trade Marks Act 1995.
The evidence submitted by you is not sufficient to overcome the objection under subsection 41(5). The evidence does not support the trade mark as filed. The exhibits provided are all (despite one reference) evidence of use of registered trade marks of your company, all consisting of the word FIJI and additional device elements (for example waterfalls, orchids, etc.), not the trade mark currently being applied for.

4. The applicant requested to be heard, and as a delegate of the Registrar of Trade Marks, I heard the submissions of the applicant presented by Cynthia Cochrane of counsel, instructed by Allens Arthur Robinson.

5. Prior to the hearing, the applicant submitted more evidence. I will discuss all of the evidence now.

Evidence

6. The statutory declaration submitted to the examiner is by Margo Schmidt, a director of Fiji Water (Australia) Pty Ltd, a subsidiary of the applicant. After stating that another of the applicant’s subsidiaries bottles in Fiji and distributes to Australia “FIJI NATURAL SPRING WATER”, Ms Schmidt defines the trade mark as ‘Fiji Water’ and avers:

Fiji Water is a non-carbonated bottled water sourced from an artesian aquifer in the Yaqara Valley on the island of Viti Levu, Fiji. The water comes from tropical rain filtered for hundreds of years through layers of volcanic rock ...
Mr David Gilmour founded [the applicant’s subsidiary] in 1996. Fiji Water was first made available for sale in Fiji in 1997 and was exported for sale to the United States in 1997; FIJI Water was exported to Canada in 1999, Mexico in 2002, and various Caribbean countries and the United Kingdom in 2003.
FIJI Water was first available for sale in Australia in April 2003. To the best of my knowledge, the Fiji Islands did not have a reputation as a source of pure water before FIJI Water was launched.

7. Concerning the history of the trade mark on the Australian market, it is convenient to quote Bennett J in Natural Waters of Viti Ltd[1] v Dayals (Fiji) Artesian Waters Ltd (2007) 71 IPR 571 at paragraph 7 and subsequently at paragraph 50:

[1] The other subsidiary referred to in paragraph 6.

Fiji Water is the first bottled water product to originate from Fiji. From about mid 2003 to mid 2006, Fiji Water was bottled and distributed in Australia by Natural Waters in a get-up (the 2003 get-up) which included the name “Fiji Natural Spring Water”.
The 2003 get-up
Since October 2005, Natural Waters has bottled and distributed Fiji Water in Australia in a get-up (the 2005 get-up) which includes the name “Fiji Natural Artesian Water”.
The 2005 get-up
For a period from October 2005 Fiji Water was available in both get-ups. From April 2006 only the 2005 get-up has been used.
Ms Schmidt’s evidence is that Fiji Water is sold in Australia in retail outlets such as cafes, bars, restaurants, convenience stores and in supermarket chains. It is offered for sale at both “on-premise” (consumed at the point of purchase) and “off-premise” (consumed away from the point of purchase) establishments.
[....]
In on-premise locations, it is generally served in the bottle, giving the consumer sustained exposure to the material appearing on the bottle. It is offered for sale in large refrigerators shared with other beverages; it may be displayed in a separate Fiji Water fridge which contains only Fiji Water; it may be purchased by name from a menu; or it may be purchased in the rooms of guests at a hotel where it is placed on display.
As to off-premise locations, Fiji Water has been sold in fine food emporiums, health food markets and independent grocery and green grocery stores “in trendy suburbs and/or high-income earning suburbs” and in city convenience stores. Since November 2005 the off-premise trade channels include supermarkets, petrol shops and convenience stores in suburban areas. Fiji Water is also sold for consumption off-premise in a variety of ways. It may be displayed in a self-service refrigerating facility shared with other goods; in a self-service fridge housing only beverages; unchilled on a shelf shared with other consumable goods; on a stand allocated solely for Fiji Water; or displayed refrigerated or unrefrigerated in a facility or on a shelf shared with other consumable goods but requiring staff assistance. In each case the get-up of Fiji Water is prominently on display to consumers.
Natural Waters has focussed its marketing strategy on “trend setting” consumers and retailers and on ensuring prominent display at selected events and locations with the aim of encouraging recognition of the Fiji Water get-up. It is marketed as a “unique water” by emphasising the square shaped bottle, the artesian nature of the product, the silica content in the product and the fact that the product “is sourced from an ‘untouched’, remote and tropical Fijian paradise”. It is also marketed as “healthy water” by, among other things, associating it with a holiday destination. Fiji Water is sold in Australia in 500 ml and 1 litre square bottles. Ms Schmidt says that the common underlying tone in both the 2003 and 2005 get-up is “that of the tropical Fijian paradise, with associations with concepts of purity, virginal ecosystem[s], and natural water source”.
Natural Waters has marketed Fiji Water extensively. During 2004, the first full year of trade in Australia, 50,000 cases of Fiji Water were sold, each case containing 24 500 ml or 12 1 Litre bottles of water. That increased in 2005 to 87,000 cases and is expected substantially to have increased in 2006.
[...]
Natural Waters has expended significant sums of money in the marketing of Fiji Water, including the maintenance of attractive point of sale displays, event sponsorship, product placement in television shows and movies or with celebrities, outdoor billboard advertising and advertising in the print media. Ms Schmidt’s evidence elaborated upon the nature and extent of the advertising and media exposure of Fiji Water as well as promotional activities with which it has been associated. The aim of Natural Waters’ promotional activities is said by Ms Schmidt to ensure that the get-up is on prominent display with the intention, inter alia, of building brand recognition and increasing public awareness of the product. Promotional items include a branded barrel fridge, umbrella, stand alone refrigerator for installation in bars and nightclubs, stock display stands and banners for use at promotional events. Natural Waters has also marketed Fiji Water as a “celebrity water”; that is, a
Photographic evidence of Natural Waters’ promotional activities emphasise different individual features of the 2003 and 2005 get-ups. For example, promotional umbrellas place a strong emphasis on the words “The Taste of Paradise” and the white orchid but do not emphasise the inner back label image or the hibiscus.

8. One difficulty I have with the declaration of Ms Schmidt is that, from paragraph 33, the reference to ‘Fiji Water’ shifts to reference to ‘the FIJI logo’. Given that Ms Schmidt also refers to the trade mark registered under European Union registration 002296713, below, as being ‘block capitals’ (rather than the FIJI logo), the form of the trade mark that she refers to as being the FIJI logo is not certain.

9. This lack of precision in the declaration introduces ambiguity into such statements as, “The word “FIJI” in the script of the Fiji logo is prominently on display to consumers in such circumstances.”

There are also ‘trade declarations’ from Richard John Werner, Purchasing Manager for the Grace Hotel; Joe Socrates, director of Socrates Distributors Pty Ltd which distributes some of the applicant’s product in Australia; Vicki Popovic, Operations Manager of the Zampeli Group that operates seventeen bars and restaurants; Kerry Ann Burzynski, proprietor of the Spoon Deli; James Berardo who is the owner of Berardo’s Restaurants, and, Serge Dansereau, proprietor and chef of the Bathing Pavilion in Bondi.
The declarants referred to in paragraph 10, above, state their knowledge of “Fiji Water” from around 2003.
The next group of statutory declarations concerns an informal survey conducted by David Yates, a solicitor of Allens Arthur Robinson. The declarants, who are Andrew Campbell, Greg Taylor, Tanya Spoor, Kylie Jane and Steven Thomas all refer to an informal survey carried out by Mr Yates in which they correctly identified ‘Fiji Water’ in conversations or material which he sent to them by email during the conversation.
There is a declaration by David Yates who attests to the registration of trade marks which contain, or consist of, the word FIJI by the applicant in several different countries throughout the world.
A further declaration is from Lara Gun who is a solicitor at Allens Arthur Robinson. Ms Gun attests to her instructions to Media Monitors Australia to research the occurrence of the words FIJI and WATER in the same articles. The results of the research are appended to Ms Gun’s declaration which I will call Gun 1.
Michael White is the General Manager of Fiji Water (Australia) Pty Ltd. Mr White attests to the volume of sales of goods bearing the trade mark since the trade mark was first used in Australia in 2003.
Lara Gun’s second declaration concerns a number of allegedly geographical words which exist as trade marks for drinking water on the Australian register.
Finally, a declaration by Jennifer Fontaine attests that she works for a public relations firm. Part of the firm’s remit is to secure dietary preference lists from sports stars, singers, rock bands, etc who are touring Australia to ensure that their needs are catered for on their tours. She identifies the product by the packaging and states that Fiji Water is requested by a number of her clients.

Discussion

Section 41 of the Act provides:
41Trade mark not distinguishing applicant’s goods or services
(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 application and operation of the provisions of section 41 of the Act was discussed in detail by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (“the designated goods or services”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).
The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken 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, is able to answer positively the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so “establish” by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.
It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant’s goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.

The start-point of my considerations therefore lies in subsection 41(3) – it is a consideration of the extent to which the trade mark is inherently adapted to distinguish the designated goods from the goods of other persons.
In Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 514, Kitto J put the test under the 1955 Act as follows:
“[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
An initial consideration lies in whether the word FIJI is, in terms of the Act, a geographical word in relation to the goods, ‘water’. It is well established that the name of a place is a geographical word in terms of the Act if it is likely to be needed by other traders to use, without improper motive, in relation to the goods of interest: compare Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511(‘MICHIGAN’ for machinery) and Oxford University Press v Registrar of Trade Marks [1990] FCA 175; (1990) 24 FCR (‘OXFORD’ for publications) as lacking any inherent adaption to distinguish with “Tijuana Smalls” Trade Mark [1973] 453 (‘‘TIJUANA SMALLS’ for cigars); Magnolia Metal Co’s Application (1897) 14 RPC 265 (‘MAGNOLIA’ for steel) as each have, at least a degree of inherent capacity to distinguish.
And see Yorkshire Copper Works Limited’s Application for a trade mark 71 R.P.C. 150 (‘YORKSHIRE’ for copper) per Lord Asquith at page 156.
“Touching these two factors
“inherent” distinctiveness;
“distinctiveness “in fact”,
there is no doubt that the Registrar “had regard to” (b) and has held, rightly or admittedly, that that factor is present “to the extent” - I am using the words of the subsection - of 100 per cent. There is equally little doubt, on the authorities, that this does not dispose of the matter: viz., it does not dispense the Registrar from considering to what extent factor (a) is present. On the decisions, which I do not need to cite, the contrary is unarguable.
As to factor (a) your Lordships have to consider to what extent this factor is present in the particular case in which the mark proposed for registration is a geographical term, eg., “Yorkshire”. I prefer to envisage this problem in the first instance in abstraction from authority. So considered, a geographical area, unless extremely small, seems to me inherently unadapted to distinguish the products of one producer in that area from those of another in the same area. When the area is as large as Yorkshire, it seems to be fanciful to dispute this proposition. Indeed, when the trade mark is geographical, it follows, paradoxical as it may sound, that it can only satisfy factor (a) where its significance, in the particular context is non-geographical. For only so can it serve to distinguish the goods of one producer from the goods of others. Good imaginary instances of this paradox are “North Pole Bananas”, “Monte Rosa Cigarettes”, and so on. In these instances the geographical term is clearly not applied in any geographical sense, and pro tanto may - I will not say must - be a sufficient compliance with Sec.9(3)(a). If it were applied in a purely geographical sense, it could not so comply, because it would simply indicate that the goods in question were supplied within a particular locality, not that they were supplied only by a specific supplier.”
As shown in the matter Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Limited [2007] FCA 200, there is at least one other trader in Fiji who bottles water for export to Australia. And, according to an article on Radio New Zealand on 7 July 2008:
The water bottling industry is outraged at the sealing off of a member’s plant by the Fiji Islands and Revenue Customs Authority or FIRCA.
Fiji Times online says three FIRCA officers sealed off the bottling area at Mineral Waters of Fiji, which bottles Viti Blu, on Johnson Road, in Lautoka, yesterday morning.
Water Industry spokesman, Jay Dayal, says the action was extremely outrageous.
Mr Dayal said he had received assurances from FIRCA that there would be no intimidation.
FIRCA general manager Customs and Excise, Jalal Dean, said his officers sealed off the place after being told the company was shutting shop for good.
He said they went in there to seal off the place so that there will be no movement of goods and to secure Government revenue.
The authority was later told the company was closed for renovation.
Mr Dean then say they will go back tomorrow we will go there and break the seal. [sic]
This, and similar articles, suggest that there may be three water bottling plants in Fiji. Although the article postdates the filing date of the application, it refers to a factory which is of sufficient long-standing to be able to claim to have closed for renovations. The water bottling industry in Fiji was also large enough to have an association and a spokesman. In Natural Waters of Viti Limited v Dayals ( Fiji ) Artesian Waters Limited [2007] FCA 200, at paragraph 62, Bennett J summarises the history of the Dayals water-bottling:
Mr Dayal began researching the possibilities of setting up a water bottling business in Fiji to cater for what he perceived to be a growing market demand for bottled water in 2001. Artesian Waters purchased land for commercial production bore-wells in February 2002. It obtained authorisation to proceed with construction in or about January 2004. From about June 2002, Mr Dayal commenced inquiries into appropriate bottle shape, name and label designs and artwork for the Dayals product.
Mr Dayal made the decisions for Dayals on the marketing of a bottled water product from Fiji. There is no doubt, based upon Mr Dayal’s evidence, that he was keenly aware of Fiji Water and its 2003 get-up when he made the decision to produce and distribute a bottled water from Fiji . Indeed, Mr Dayal readily conceded that he was keenly aware of the get-up used by Fiji Water in the form of the bottle that had been sold in Fiji from 1997.
Ms Cochrane also submitted that no other person had used the word FIJI either as a brand or in relation to natural spring water and artesian water for drinking, or as a description of origin of the origin of natural spring water and artesian water for drinking in Australia. Ms Cochrane contrasts this with the situation in Clark, above, where, she submits, the designated goods were types of manufacturing goods and the State of Michigan was found to be an important manufacturing centre.
Of course, the fact that no other trader has used the word as a trade mark is irrelevant – if another trader had used the word FIJI as a trade mark for water in Australia, that trader would have a prior right to that of the applicant. Nor do I consider it to be of overwhelming significance that the applicant is the first trader to export to Australia using the word FIJI as a trade mark or descriptor of the origin of the goods. What is relevant is the potential that a word has to being of geographical significance in relation to the goods. In this regard Gummow J said in Re Chancellor, Masters and Scholars of the University of Oxford T/A Oxford University Press v the Registrar of Trade Marks [1990] FCA 175; 24 FCR 1, at paragraph 41
The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration; see Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 at 515-516.
Accordingly, the use of the word FIJI as a trade mark for ‘water’ is not fanciful, as might be NORTH POLE for bananas, or SAHARA for lettuce. Neither is the word the name of a place where the goods are unlikely to originate. The word is one which is needed in the normal course of trade, without improper motive, by other traders in Fiji to describe the origin of their goods.
I therefore find that the word FIJI is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
That, however, is not the end of the matter. There is the issue of the get-up, or otherwise, of the trade mark to be considered.
In Freelife International Holdings LLC [2009] ATMO 45, at paragraph 16, I noted:
There is, as I have mentioned above, some guidance from the Courts as to what constitutes inherently distinctive ‘get-up’ within a trade mark – or what is not. In Complete Technology Integrations Pty Ltd v Smart Home Solutions Pty Ltd [2008] ATMO 39, at paragraph 43, I noted the parties’ submissions:
At the hearing Mr Maxwell, for the applicant, drew my attention to the black block within the trade mark which encloses the words ‘smart’ and ‘solutions.’ He also drew my attention to the font or fonts in which the trade mark is rendered and stated that the applicant in effect sought protection for these aspects of get-up in which the words are rendered and that these aspects effectively move (or restrict) the considerations to ones under either subsection 41(3) or subsection 41(5).
Mr Kell drew my attention to Bayer Pharma Pty Ltd v Farbenfabriken Bayer Aktiengesellschaft [1960] HCA 35; (1965) 120 CLR 285 (‘Bayer’) where the applicant involved, “sought registration of a mark consisting of the word BAYER printed in roman capital letters horizontally and again vertically, so that the printings intersect and the letter “Y” is common to both, the whole being enclosed within a circle.” Mr Kell also drew my attention to Oregon, above, where what was sought to be registered was the word ‘Oregon’ within an elliptical or oval border.
In Bayer, Kitto J observed at paragraph 13:
If, then, the desired registrations are to be granted, it must be on the ground that the cross device, possesses a capacity, either inherent or acquired, to distinguish goods as being in a relevant sense the respondent’s. First, then, is the cross device inherently adapted to produce this effect? I do not think that it is. In my opinion it merely provides a fancy method of presenting the name “ Bayer “, and it has no greater aptitude than has the name itself for distinguishing the proprietor’s goods from those of other people who happen to be known as “Bayer” It seems to me beyond doubt that the name is the feature which makes the device what it is - the feature which stands out as the operative thing in it, and to which everything else is merely assistant - the feature which (to use a phrase of Lloyd Jacob J. (1955) 72 RPC, at p 195) “would strike the eye and fix in the recollection”. The dominant impression which the device gives is not adequately described as that of a cross formed by printing; it is an impression of the name “Bayer”, arranged indeed in a particular way so that it appears twice yet with compactness and definition, but predominantly the name “Bayer”. The effect produced by an application of the device to particular goods is essentially that of a branding of the goods with that name, albeit in a quaint manner; for, to some extent by the delimiting effect of the circle, and much more by the arrangement of the two words so that they intersect and share the one middle letter, attention is focussed on the identity of the words, and “Bayer” is impressed sharply on the mind. Throughout this case, the device has been referred to, by witnesses and counsel alike, as a “Bayer” Cross. That is exactly what it is: not in the sense that it is a cross device belonging to a person or corporation having “Bayer” as part of its name, but in the sense that it is in essence the word “Bayer”, presented in the form of a cross. The case seems to me to be as clear as the Benz Case (1913) 30 RPC 177 and the Ludowici Case [1938] HCA 67; (1938) 61 CLR 149 (at p293)
In Oregon, which was a decision under the Trade Marks Act 1995 as opposed to its legislative predecessors, Branson J referred to Bayer with approval and observed:
By analogy, it seems to me that I must conclude that the particular manner in which the applicant’s trade mark presents the word “Oregon” does not give it inherent adaptability to distinguish the designated goods, the word “Oregon” alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word “Oregon” are sufficient to take the applicant’s trade mark outside of the ambit of the observation set out above of Kitto J in the Bayer Pharma Case. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber.
There are, on the other hand, renditions of trade marks which are peculiar enough to be considered to be inherently distinctive. In The American Tobacco Company, Re [1996] ATMO 29; (1996) 35 IPR 98, Senior Examiner Jarvis noted:
In British Milk Products Co Ltd’s Application (1915) 32 RPC 453, Sargant J found that, if the name comprising the mark was rendered in a more or less ordinary handwriting, it did not constitute a registrable trade mark. For a representation of a trade mark such as the applicant’s to be considered capable of distinguishing the designated goods, it would need to have an exceptional appearance “so as to strike the eye as peculiar”, in the words of Lawrence L J in Fanfold Ltd’s Appn (1928) 45 RPC 325 at p 333. This was not found to be so in that case where the mark consisted of the word “Fanfold” arranged in a curve and the abbreviation “Ltd.”, both placed above a commonplace scroll with folded ends. A similar view to that of Lawrence LJ, was expressed by Jacob J in Standard Cameras Ltd’s Application 69 RPC 125, where the mark, consisting of the name “Robin Hood” represented in an unusual manner by having the letter “R” in a form of an archer and the letter “D” depicting a target, was found to be original and one which other traders would be unlikely to devise. His Honour said at p 129:
“No one, I think, would seriously contend that to any ordinary eye the representation of the words “Robin Hood” set out on this application would not be accepted by everybody as being out of the common. Having come to the conclusion that it is out of the common, I have to look at it to see whether it is sufficiently out of the common to strike the eye as peculiar, and by “peculiar” I mean not likely to occur to somebody who merely wishes to represent the word.
Applying the above principles, and the words of Kitto J in the quote from Clark, above, I consider that the font, or get-up in the trade mark, is one, or one nearly resembling, that which a trader might need to use in the normal course of trade and without improper motive. The trade mark is not to any extent inherently adapted to distinguish the goods of the applicant from those of other traders.
The issue of the trade mark’s registrability in terms of section 41 of the Act thus stands to be considered in terms of subsection 41(6) of the Act.

Acquired distinctiveness

The issue to be assessed is whether the applicant has established in its evidence that, because of the extent to which the applicant has used the trade mark before the filing date in respect the goods of the application, it does distinguish the designated goods as being those of the applicant. As observed by Branson J in Blount, above, the onus is on the applicant to satisfy me that the trade mark had become distinctive of the applicant’s goods before the filing date of the application.
The filing date of the application is 2 February 2004. Ms Schmidt says, “Fiji Water was first available for sale in Australia in April 2003.” Ms Schmidt gives the amount of cases of the goods sold in Australia during 2003 as being 25,000 cases. Ms Schmidt and Mr White give sales of cases of bottles of goods bearing the trade mark in the calendar year 2004 as being 50,000 cases. The figure includes four months of 2004, up to April, when this application was filed and (if sales throughout the year were constant), about 16,666 cases could be notionally proportionately attributed to the period of January to April 2004. These figures would give approximately 41,666 cases of goods sold bearing the trade mark before the filing date of the application.
Other evidence filed by the applicant relates to the publicity that the trade mark has received in the international and local media – including ‘product placement’ in American television programmes and the predilection that some film and sports stars have for goods bearing the trade mark and their reported demands that the applicant’s goods sold under the trade mark be provided to them whilst on tour. It is impossible to gauge the impact of the appearance of goods bearing the trade mark in television programmes such as dramas or sitcoms which are shown in Australia when the goods are not present in the Australian marketplace. Are such goods regarded by an Australian audience as being real goods carrying a real trade mark? or are they regarded as being in the same category as the fictitious BINFORDS power tools in the sitcom Home Improvements?
Much of this evidentiary material could arguably be use of the trade mark in the places where the television programs originate, but, absent the presence of the goods in the Australian market prior to 2003, I am of the opinion that these appearances of the trade mark might contribute to reputation but not to the acquired distinctiveness of the trade mark. ‘Reputation’ has the meaning discussed by Kenny J in McCormick & Company Inc v McCormick [2000] FCA 1335 at paragraph 81:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Acquired distinctiveness is, however, the acquisition of a secondary meaning of the word FIJI in Australia as a trade mark which denotes the goods of the applicant. In this regard, see Re Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310; (1991) AIPC 90-823; 101 ALR 700; 21 IPR 1; 30 FCR 326 where Lockhart, Burchett and Gummow JJ said at paragraph 51:
A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix (1959) RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counter balance the descriptive character of the word: see Coats (1936) 53 RPC 355 at 368 and The Yorkshire Case (1954) 71 RPC 150. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J.C. Cording and Co. Ltd. (1909) 26 RPC 693 per Parker J. at 704, and the Perfection Case at 857-8. But the word must in order to become distinctive have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham (1896) AC 199 per Lord Herschell at 213.

Ms Cochrane drew my attention to the words of Finkelstein J in Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at 64:
In my opinion the judge was entitled to infer that the indirect brand advertising employed by Hansen (and, for that matter, Bickfords) can establish reputation as well as, if not better than, direct advertising. After all, everyone knows that James Bond drives an Aston Martin, Janis Joplin wanted to own a Mercedes Benz and Audrey Hepburn had breakfast at Tiffany’s.
I naturally agree – however, Finkelstein J referred to ‘reputation’ rather than ‘distinctiveness in fact,’ acquired through use in Australia. That reputation will obviously contribute to the distinctiveness in fact in some way as it does in the examples given by His Honour; but only because a trade mark has been shown to be developing a reputation in Australia it does not necessarily follow that the trade mark is distinctive in fact. The assumption that reputation is the same as distinctiveness in fact suffers from the same logical flaw as does the assumption that use equals distinctiveness – in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 Jacob J stated (at 302):
I have already described the evidence used to support the original registration. It was really no more than evidence of use. Now it is all too easy to be beguiled by such evidence. 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 a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark.
Thus, while reputation and acquired distinctiveness are related concepts, they are different from one another. They are different species that swim in the same stream. It would seem that a trade mark might be ‘recognised by the public generally’ well before a secondary meaning for the word has developed. If the pre 2003 appearances of the trade mark in media were noticed by the public in Australia, those appearances would have contributed to the reputation of the trade mark, rather than contribute to a secondary meaning for the word FIJI: for a discussion of overseas trade marks developing a reputation in Australia see Conagra Inc v Mccain Foods (Aust) Pty Ltd [1996] FCA 1409.
I am not persuaded by the examples of arguably geographical words which exist on the register of trade marks submitted in evidence in Ms Gun’s second declaration. I am to consider this application on its merits and consideration of the merits of existing registrations does not affect the merits of this application. In the words of Wilcox J in Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 at paragraph 35:
The second matter mentioned by Ms Baird is that Ocean Spray adduced evidence of other registered marks that contain, or consist wholly of, the word “classic”. That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281at 305:
“Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat’. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence.”
I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.
Another difficulty I have with the evidence is because the declarants, without exception, refer to ‘Fiji Water’ in ways which suggest they are failing to distinguish between the trade mark and the product on which it appears. For example, when Mr Yates asked Mr Campbell, “When I describe the following goods to you, “Natural spring and artesian water for drinking,” what product do you think of?” Mr Campbell’s response was “Fiji Water”. [Stress added] In Mr Berardo’s declaration he states, “Since 2003, when I have used the word “FIJI” in relation to bottled water products, I have used it to refer to “Fiji Water”, that is, this is the product appearing in the photographs in Exhibit JB-1.” [Stress added] If the declarants are referring to the goods as being “Fiji Water” the trade mark FIJI is obviously failing, and will continue to fail, to gain any acquired distinctiveness. However, if on the other hand, the declarants are referring to the trade mark as being “Fiji Water”, that is not what the trade mark is – the trade mark is the word FIJI. The declarations thus fail to convey any indication that the trade mark might have developed, or might develop, a secondary meaning.
Additionally, difficulties exist with the informal survey conducted by David Yates. I am not sure how the declarants who have responded to the survey were selected, whether they are the only respondents to the survey and how they happened to be sitting by their phone and a computer at the time of the survey. As I have previously observed, both Mr Yates and the respondents appear to conflate the trade mark and the product and call them both Fiji Water. The inherent problems with this approach are spelt out in the foregoing paragraph.
After considering the foregoing, I consider that the applicant has not established that the trade mark did distinguish the goods of the applicant at the filing date of the application

Decision

Section 33 of the Act provides:
33 Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
Note:For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.
(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note:For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note:For applicant see section 6.
I reject application 987111.

Iain Thompson

Hearing Officer

Trade Marks Hearings

23 November 2009