Pfizer Inc v the Bio-Dynamic Research Institute

[1996] ATMO 17

TRADE MARKS ACT 1955

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

Re:Opposition by THE BIO-DYNAMIC RESEARCH INSTITUTE to registration of trade mark application number 505339 in the name of PFIZER INC. for the mark BIODYNAMIC SERIES in Class 3

Background
Application number 505339 was lodged on 22 February 1989 in the name of PFIZER INC. (the applicant).  The applicant sought to register the mark, BIODYNAMIC SERIES, for the statement of goods, "All goods in this class", in Class 3.  The mark was advertised as accepted in the Official Journal of 6 June 1991.

Notice of opposition to the mark's registration was lodged, on 6 September 1991, by THE BIO-DYNAMIC RESEARCH INSTITUTE, (the opponent). The opposition was based on 15 separate grounds but the only one of these that was pursued at the hearing in the matter was that under s.24 of the Trade Marks Act 1955 (the Act), that the mark was not adapted to distinguish, nor was capable of distinguishing, the applicant's goods.

The evidence
The service and lodgment of the evidence in support, answer and reply in the matter was completed by 5 December 1994.  The evidence comprised:

Evidence in support

*Statutory declaration by Alexei de Podolinsky dated 31 March 1992 (first Podolinsky declaration) and exhibits AP1 to AP14.

*Statutory declaration by various declarants, namely: Stephen Alexander, Michael Byrne, Richard Easton, John Sadler, Lita Spivey, Glenda Stephenson, Jeffrey Walz and Kingsley Warburton.

Evidence in answer

*Statutory declaration by Dr. Harf and Mrs G. Monnas dated 26 July 1993 and Annexure A.

Evidence in reply

*Statutory declaration by Alexei de Podolinsky dated 11 October 1994 (second Podolinsky declaration) and exhibits AP15 to AP17.

*         Statutory declaration by Dr Jurgen Klein dated 1 December 1994.

In the first Podolinsky declaration forming the major portion of the evidence in support, Dr de Podolinsky, the founding director of the opponent, described the history and background of his organisation, and its involvement in BIODYNAMIC farming methods and teachings.  He outlined how these methods were developed and gave details of their successful use on Australian farms in growing produce.  He also gave details of sales and advertising figures in relation to the goods produced using BIODYNAMIC methods.  Exhibited to his declaration were copies of publications, documents, reports, newspaper and magazine articles, advertisements, and videos related to the BIODYNAMIC “natural method” of farming.  The balance of the evidence in support comprised various declarations from persons involved in some way with BIODYNAMIC farming methods.

The evidence in answer comprised a declaration by Dr. Harf and Mrs G. Monnas, respectively the Chief Executive Officer and the Deputy Managing Director of the assignee company to the mark.  They said that use of the word BIODYNAMIC by the opponent had been confined to foodstuffs grown using particular agricultural practices and any reputation in that word lay with those products.  They declared that there had not been any instances of confusion between those products and the applicant’s cosmetics.  They said that the latter goods had been sold in Australia under the present mark since 1989.  They also gave details of sales of cosmetics under the mark.  Annexed to their declaration was a sample of packaging which, they said, showed use of the mark in question.

The evidence in reply included the second Podolinsky declaration.  Here, Mr de Podolinsky listed the foodstuffs on which the word BIODYNAMIC had been used to certify that they had been made from goods grown using particular agricultural practices.  He said that while the word had not yet been used on cosmetics, it had been used by other traders on such items as homoeopathic medicines, baby care products, massage, skin and bath oils and natural body care products to indicate that they had been manufactured from plant materials grown in accordance with BIODYNAMIC farming methods.  Exhibited to the declaration were a selection of labels of processed food goods featuring the BIODYNAMIC mark and other traders’ promotional literature for the class 3 items.  The balance of the evidence in reply comprised a declaration by Dr Jurgen Klein, whose company, Jurlique International, manufactures a range of skin care, body care and hair care products made from herbs grown using BIODYNAMIC farming methods.

The matter came before me for hearing, as the Registrar’s delegate, in Melbourne on 8 February 1996.  The opponent was represented by Ms Christine Lowe of Davies Collison Cave, patent attorneys accompanied by Mr de Podolinsky.  The applicant chose not to appear at the hearing but instead relied upon written submissions by its attorney, Mr Michael Kirov of Spruson Ferguson, patent and trade mark attorneys.

Submissions
At the hearing, Ms Lowe confirmed that the opponent would only be relying upon the ground that the mark was not distinctive, or capable of becoming distinctive, of the applicant’s goods.  She said that the combination of words BIODYNAMIC SERIES was not inherently adapted to distinguish the goods of the applicant from those of other traders and thus was not capable of acting as a trade mark.  Ms Lowe said that it was an accepted tenet of trade mark law that a mark must be inherently adapted to distinguish to qualify for registration.  She relied for support here on the words of Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, the MICHIGAN case, in relation to determining whether a mark was so adapted. She said that in determining whether a mark satisfied the requirements of s.26 of the Act, consideration should be given to the extent to which it was inherently adapted to distinguish and whether, through use, or other circumstances, the mark had acquired distinctiveness in the market place.

Ms Lowe said that in the present instance, notwithstanding that the mark was, in her opinion, inherently unadapted to distinguish, the evidence of use lodged was very slight.  It only comprised the declaration by Dr. Harf and Mrs G. Monnas of the assignee company, which made unsupported claims of use by the applicant of the mark on cosmetics since 1989 with a total of only 736 units sold in that time.  She said that as in Du Cros (W&G) Ltd’s Appn (1913) 30 RPC 660 - the W & G case - the essential question was whether the trade mark was one which others would want to use to describe their products. Here, the word “BIODYNAMIC” was descriptive of the composition of the goods of the application. Ms Lowe said that from the examiner’s notes made during consideration of the registrability of the mark, the dictionary meanings of that word, showing its descriptive use, appeared to have been ignored. She said that there had been, in recent times, a trend to develop and use natural products, and BIODYNAMIC farming methods were widely used in producing these.

Ms Lowe argued that class 3 goods, such as the applicant was seeking to cover here, could easily incorporate natural goods produced using BIODYNAMIC methods in their manufacture.  Thus, the words BIODYNAMIC SERIES would be descriptive of the composition of the applicant’s goods and their registration as a trade mark would preclude other traders from describing similarly produced goods.  She pointed to the second Podolinsky declaration, where he had said that the word BIODYNAMIC was being used by some manufacturers to describe the farming methods used in growing plant materials used for their goods - including those in Class 3.  She further referred to the declaration by Dr Klein, of Jurlique International, where he had said that his company produced skin care, body care and hair care goods made from herbs grown using BIODYNAMIC methods.  She said that the various trade declarations, submitted as part of the evidence in support, showed that most declarants had said that they would be confused as to the source of products carrying the BIODYNAMIC SERIES mark

Ms Lowe finally referred for support to an Office decision, Frederick Inman v J. Kitchen & Sons Pty Ltd, 1939 AOJP 1383, where the Deputy Registrar of Trade marks had found that the word VITAMIN, when used as a trade mark on, or in connection with, soaps or cosmetics, had direct reference to the character or quality of the goods, in that it indicated a vitamin content.  Alternatively, if it did not, then it was misdescriptive.  Ms Lowe said that the present mark had the same failings.  She said that the word BIODYNAMIC had been widely used for many years and to allow the present application to be registered, would give the applicant a monopoly of the use of a common word incapable of distinguishing one trader’s goods.

In his written submissions in answer, the applicant’s attorney, Mr Kirov put forward arguments against the 15 grounds raised in the notice of opposition.  However, as Ms Lowe had limited her submissions to the issue of the alleged lack of inherent distinctiveness of the mark, I will only summarise his comments as they relate to that objection.

Mr Kirov said that the word BIODYNAMIC was used in an Australian Quarantine and Inspection Service publication, titled National Standard For Organic And Bio-Dynamic Produce, submitted with the opponent’s evidence, specifically in relation to farming systems producing food.  He argued that the applicant, in filing the present application, was only seeking to claim proprietorship of the subject mark on class 3 goods.  He said that the “aforementioned reasons”, relied upon by the opponent in grounds 1 to 8 of the notice of opposition, did not substantiate the assertion that the mark was not capable of distinguishing the applicant’s class 3 goods.

Mr Kirov alleged that the opponent had not used the word BIODYNAMIC in a trade mark sense in relation to goods grown using the system and particularly not in relation to class 3 goods.  It had instead used the mark, in relation to a particular method of agriculture, in various contexts and forms as an adjective and as an adverb.  He submitted that many of the exhibits relied upon by the opponent, including video tapes made by Dr de Podolinsky, post-dated the present application, which had been made on 22 February 1989 and were therefore irrelevant to the present opposition.  He further said that none of the persons making the trade declarations had referred to the word BIODYNAMIC in relation to class 3 goods, only associating the word with agricultural products.  He said that one of the companies, referred to in the opponent’s evidence as producing class 3 goods from plant materials grown using BIODYNAMIC farming methods, was from New Zealand and there was no evidence of its activities in Australia or use of the word BIODYNAMIC as trade mark prior to February 1989.  He submitted that the other company, said to be using the word BIODYNAMIC in relation to class 3 goods in South Australia, was subject to the same criticism and their advertising material submitted was dated after the present application had been made.

He closed his submissions by seeking costs on behalf of the applicant.

Discussion
In deciding the present matter, I am mindful that the argument relied upon by Ms Lowe in her submissions at the hearing, that of the mark not being inherently distinctive in a general sense, was not referred to, in those terms, in the notice of opposition originally lodged.  Ground 9 of that notice did assert that the “alleged trade mark is not adapted to distinguish nor is capable of distinguishing the applicant company’s products for the aforementioned reasons”, (my emphasis).  The reasons referred to included: disputed claims of ownership of the mark; applications by the opponent for registration and use of, certification marks comprising the word BIODYNAMIC; alleged deception and confusion by reason of use of the mark by the applicant; and alleged reputation in the word for the opponent.  Those grounds were not followed up at the hearing.  Instead, Ms Lowe’s submissions which went towards alleging that the mark was simply not inherently distinctive for class 3 goods.

However, despite any allegations which could be made that the opponent relied at the hearing on grounds which were not stipulated in the notice of opposition, I am of the opinion that I can rightly consider Ms Lowe’s argument on the alleged general lack of inherent distinctiveness made at the hearing.  This is because s.50(2) of the Act says that, “In determining the opposition the Registrar may take into account a ground of objection whether relied upon by the opponent or not.”  I think that Mr Kirov had ample opportunity to put arguments against any allegations of a lack of inherent distinctiveness.  The claim in ground 9 of the notice of opposition was that the mark was not adapted to distinguish (regardless of why it was considered to be so) and it was open to the applicant to dispute that assertion before the Registrar.  Additionally, the thrust of the opponent’s evidence went towards its argument at the hearing that the mark generally lacked inherent distinctiveness for the goods of the application.  The opponent could have produced argument or evidence to seek to answer this.  As I have interpreted Mr Kirov’s submissions, he has attempted to do so.

Section 24 (1) of the Act reads:

A trade mark is registrable in Part A of the Register if it contains or consists of-

(a) the name of a person represented in a special or particular manner;
           (b) the signature of the applicant for registration or of some predecessor in his   business;
           (c) an invented word;
           (d) a word not having direct reference to the character or quality of the goods   or services in respect of which registration is sought and not being, according   to its ordinary meaning, a geographical name or a surname; or
           (e) any other distinctive mark.

The basic requirement for the registration of any trade mark in Part A is that it is distinctive, i.e. adapted to distinguish the goods of its owner from the similar goods of other traders.  The test as to whether, or not, a mark is adapted to distinguish is well established.  If the mark is one which other traders would desire to use, without improper motive, upon or in connection with their own goods, then registration will generally be denied - the MICHIGAN case, supra.

I think, from the evidence, that the word BIODYNAMIC, when used in relation to a farming method and the resultant produce, is one which other traders would wish to use to describe such a practice and goods.  It would seem that the word has been used in relation to agriculture for many years, firstly in relation to the specific farming practices suggested by Dr Rudolf Steiner, which were later used by farmers and on their resultant produce.  It would also appear that Dr de Podolinsky adapted Dr Steiner’s methods to Australian conditions and widely taught the process in this country.  However, it would also seem that the organisation which he heads does not have a monopoly in the use of the term BIODYNAMIC.  From the opponent’s evidence and submissions made at the hearing, it would seem that there are 700 Australian farms using biodynamic methods, only 186 of these linked to the opponent and being permitted to use its certification mark, DEMETER.  The word BIODYNAMIC is used, in a general and descriptive sense, in relation to agricultural processes and products, in dictionary entries, newspaper articles, advertising and government reports, on packaging such as milk cartons, flour sacks, bottles, jars and labels, and by the opponent itself in the various publications which it distributes.  In all of this, there has not been any evidence submitted which shows that the opponent ever sought to discourage use of the word in a descriptive sense by others in Australia.  In fact, the reverse would seem to apply, with the opponent actively promoting use of the word at every turn.  Such circumstances have, in my opinion, rendered the word generic as meaning any process or good in relation to that specific type of natural farming method and should be available to all.  Mr Kirov, in his written submissions at the hearing, agrees that the word has been used in a descriptive and non-trade mark sense by the applicant.  I therefore think that, in relation to primary methods and produce, the word is non-distinctive for those goods and services.

It would appear, from advertisements in magazines and newspapers, point of sale brochures and on television that there is a plethora of cosmetics, skin and hair lotions and soaps, which contain “natural” ingredients such as rosemary, lavender, chamomile, rosemary, boronia, rose, aloe, cucumber, avocado, mandarin and walnut, to name a few.  It is also the case that emphasis is sometimes given to the way these primary goods are produced, e.g. “organically grown”.  I am aware, from my own knowledge of the market - although not having purchased such goods for my personal use - that such claims have been made for many years - certainly well before the present date of application.  In the Jurlique catalogue included in the opponent’s evidence, it is additionally claimed that its skin care products’ ingredients are “biodynamically grown”.  It would therefore appear that the word BIODYNAMIC is one which such manufacturers might wish to use to describe how the primary ingredients of their goods are grown.  Thus, I must conclude that the word is presently not adapted to distinguish the goods of any one trader in relation to class 3 goods.

The question to be answered here, however, is whether that word was sufficiently non-distinctive, in relation to class 3 goods, to render the mark inherently unadapted to distinguish those goods, as the date of application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Mr Kirov argued that the Weleda company, whose brochure showing use of the word BIODYNAMIC was included in the opponent’s evidence, is a New Zealand company and that there was no evidence of Weleda’s use of the word in Australia. I agree that it appears to be the New Zealand branch of an international company and I have not taken this part of the evidence into consideration in determining the matter.

Mr Kirov further argued that the material from Jurlique International, included in the evidence, did not show use of the word in relation to class 3 goods as at the date of the present mark’s application.  He said that the only way to date the material was in relation to a competition, mentioned in the material, with a closing date of 30 November 1993 - well after the date of application.  However, that date is on a separate flier to the (undated) main brochure and the competition may have been run after the first use of the word by Jurlique.  Of more significance, I feel, is the other glossy brochure included in the evidence from Jurlique and which has the following entry, “(Jurlique) uses organic and biodynamic soil care, working with Mother Nature, out in the open fields”.  This brochure also which bears the words “© Copyright Dr. Jurgen Klein 1989”.  I think that I am entitled to infer from this that Jurlique was using the word BIODYNAMIC in a descriptive sense in relation to class 3 goods sometime in 1989.

I have also looked at the sample of packaging annexed to the declaration by Dr Haaf and Mrs G. Monnas, lodged by the applicant as evidence in answer.  I think that the words BIODYNAMIC SERIES on that packaging is not presented in a trade mark sense.  The major mark on the packaging is COTY BOTANICALS and the words BIODYNAMIC SERIES appear much smaller and in a similar style to the words INTERCEPTING SERUM-24.  Both of these sets of words appear to be intended to provide information, e.g. the nature of the goods .  I therefore think that other traders may have also been using the word in such a way to describe the origin of the primary goods used in the manufacture of their class 3 products.

I therefore find that the applicant’s mark BIODYNAMIC SERIES was not adapted to distinguish, nor was capable of distinguishing, the applicant's goods as at the date of application and accordingly, is not distinctive.  The opponent is therefore successful under this ground of opposition.

Conclusion
I find that the opponent has succeeded on the one ground relied upon at the hearing - that the mark is not adapted to distinguish, nor is capable of distinguishing, the applicant's goods.  It has therefore been successful in the opposition as a whole and, subject to any appeal from this decision, I find that the mark should not proceed to registration.  I can see no reason why costs should not follow the result and I accordingly award costs in the matter to the opponent.

Ian Forno
Hearing Officer

4 March 1996