Probiotics Australia Pty Ltd

[2022] ATMO 85

TRADE MARKS ACT 1995

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

Re:Trade mark application number 2091384 (classes 1 and 5) – PAB in the name of Probiotics Australia Pty Ltd

Delegate:	Tracey Berger
Representation:	Applicant: Jack King-Scott, Kings Patent & Trade Marks Attorneys Pty Ltd
Decision:	2022 ATMO 85 Trade Marks Act 1995 (Cth) – section 33 proceeding – section 41 considered – trade mark not capable of distinguishing – evidence of use insufficient – trade mark application rejected.

Background

1.   On 27 May 2020 (‘Relevant Date’), Probiotics Australia Pty Ltd (‘Applicant’) filed an application to register the following trade mark:

Trade Mark:         PAB (‘Trade Mark’)

Application No:    2091384 (‘Application’)

Goods: Class 1: Bacteria (other than for medical or veterinary purposes); bacterial and bacteriological preparations, other than for medical and veterinary use; bacterial substances for industrial and scientific use; bacteriological cultures, other than for medical and veterinary use, including for addition to food, milk and dairy products, including fermented milk products; cultures, other than for medical and veterinary use, including cultures of microorganisms; cultures of microorganisms for use in food and beverage manufacture; enzyme preparations for industrial purposes, including preparations for use in the manufacture of food, milk and dairy products, including fermented milk products; Lactobacillus, Bifidobacterium, Streptococcus, Saccharomyces, Lactococcus, Enterococcus, Pediococcus, Leuconostoc and Bacillus for use in food and beverage manufacture; milk ferments (bacterial preparations) used in making foodstuffs; probiotic bacterial formulations (other than for medical use); and starter media and enzymes for use in food, milk and dairy product manufacture

Class 5:  Bacteria for medical or veterinary purposes; bacterial cultures; bacterial preparations and products for medical and veterinary use; bacterial vaccines; bacteriological culture mediums; bacteriological cultures and preparations for medical and veterinary use; biological agents (bacterial or fungal); biological preparations for medical, pharmaceutical and veterinary purposes; biological preparations for use in biotechnology and cell cultures (medical); babies beverages; beverages for medical purposes, including beverages containing added minerals, added trace elements and added vitamins; beverages for infants; chemical products for use in detection or identification of bacteria (medical or veterinary use); cultures for medical, pharmaceutical or veterinary use, including cultures of microorganisms; cultures of microorganisms for use in dietary supplements, food supplements, and vitamin and mineral preparations; culture media for medical or veterinary use; Lactobacillus, Bifidobacterium, Streptococcus, Saccharomyces, Lactococcus, Enterococcus, Pediococcus, Leuconostoc and Bacillus for medical and veterinary purposes; Lactobacillus, Bifidobacterium, Streptococcus, Saccharomyces, Lactococcus, Enterococcus, Pediococcus, Leuconostoc and Bacillus for use as ingredients in pharmaceutical products, food supplements and beverages; pharmaceutical and veterinary preparations; dietetic nutrients and substances for medical and veterinary use; dietary supplements, including nutritional supplements for animals and infants; dietary food preparations for medical use (medical food); dietary food supplements; dietary protein supplements; fibre supplements; food supplements; herbal beverages for medicinal purposes; vitamin and mineral preparations; lactic acid bacteria; probiotic bacterial preparations, including preparations in the nature of food supplements for human consumption; probiotic bacterial formulations for medical and veterinary use; medicated food supplements and beverages; medicated preparations for use as supplements for food and animal feedstuffs; medicinal beverages; medicinal food supplements both for human and animal consumption and including dietary supplements; and nutritional supplements, including for human consumption and animal feed

(‘Goods’)

2. The Application was examined as required by s 31 of the Trade Marks Act 1995 (Cth)[1] and a first examination report issued.  The report identified the following ground for rejection under s 41:

PAB refers to PROPIONIC ACID BACTERIA which are aromatizing bacteria for milk goods and often used in conjunction with LAB, LACTIC ACID BACTERIA for ripening and fermentation of milk goods.

This indicates that your bacterial and bacteriological preparations are PAB bacteria.

Other traders should be able to use PAB in connection with goods or services similar to yours. Please note that a section 41(3) will apply to all of the goods claimed in Class 1 of the application as well as many of the goods in Class 5. A section 41(4) will apply to the food and supplements goods in Class 5.

3.   In response, the Applicant filed submissions that PAB is a coined mark being an acronym for “Probiotics Australia Bacteria”.  In support of its arguments, the Applicant supplied the results of various online searches, pointed to its Chinese registration and US application and provided a declaration of Shaun Roux, General Manager of the Applicant, made on 12 November 2021 with Exhibits SR-1 to SR-7 (‘Roux Declaration’) outlining the Applicant’s adoption and use of the Trade Mark in Australia since May 2020.

[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’).

1. A second examination report issued maintaining that the Trade Mark has a meaning in the scientific community.  The Applicant’s evidence was considered insufficient due to the short period and manner of use of the Trade Mark for the Goods.

2. The Applicant exercised its right to be heard by way of written submissions and paid the requisite fee.  Written submissions were filed and this matter was allocated to me to determine in my capacity as a delegate of the Registrar of Trade Marks based on the material filed during the proceedings.

3. As a preliminary observation, I note that the ground for rejection must be considered afresh and s 33 embodies a presumption of registrability which provides that the Registrar must accept an application for registration, unless satisfied that there are grounds under the Act for rejecting it or the application has not been made in accordance with the Act.

   Section 41

4. This section relevantly provides:

   41  Trade mark not distinguishing applicant’s goods or services

   (1)  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 (the 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.

   (2)  A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)  This subsection applies to a trade mark if:

   (a)  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; and

   (b)  the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)  This subsection applies to a trade mark if:

   (a)  the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)  the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)  the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)  the use, or intended use, of the trade mark by the applicant;

   (iii)  any other circumstances.

   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:       For goods of a person and services of a person see section 6.

   Note 3:       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 (5) and 7(3) and section 8).
   
   

5. Determining the merits of the s 41 ground for rejection requires consideration be given to the extent, if any, of the Trade Mark’s inherent adaptation to distinguish the Goods. This is assessed:

   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.[2]
   
   

   [2] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J) (emphasis added).

6. The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[3] indicated that the test for distinctiveness under s 41 of the Act is a two-step process. First, it is necessary to determine the ordinary meaning of the trade mark, in Australia, to persons who will purchase, consume or trade in the goods and services.[4]  Once the ordinary signification is established, consideration must then be given to whether other traders might legitimately desire to use the trade mark for the sake of its ordinary signification in respect of the same or similar goods.

   [3] [2014] HCA 48 (‘Cantarella’) (French CJ, Hayne, Crennan and Kiefel JJ).

   [4] Ibid [71].

   Ordinary Signification

7. The Examiner alleges that the Trade Mark is a well-known acronym for “propionic acid bacteria” and that this is the ordinary signification of the mark to a significant number of persons who will purchase or trade in the Goods.  Purchasers of the Goods will be manufacturers of foods, probiotics and other goods containing bacteria or, for foods, beverages and supplements, will be general consumers of health products.

8. Firstly, the Applicant contends that use of the term PAB is limited to scientific journal articles and is not in common use.  Searches of the internet for “PAB” returned no relevant results in the first two pages, an internet search for “PAB bacteria” limited to Australia disclosed only 6 relevant results all of which were a reference to the Goods and a search of returned only 12 results when limited to “Science & Medicine”, none of which referred to propionic acid bacteria.  

9. During examination, the Examiner pointed out that a search for “PAB bacteria” generates “thousands of results most of which are journal articles and references by scientific manufacturers of probiotic goods discussing the benefit of PROPIONIC ACID BACTERIA as probiotics…As such, the term PAB is one that is widely understood to refer to a group of bacterium that are used in the probiotic industry, as raw bacteria purchased by other manufacturers of cultured goods, probiotics, and used in supplement and fermented goods. These are goods purchased with some considerable care and attention, by both laboratories and consumers alike, and the term PAB would have greater significance to the scientific consumer, perhaps less to the average consumer, and that is why a s41(4) has been raised on some of the goods in class 5 only”.

10. The Applicant says that it was not appropriate for the Examiner to conduct such a “single highly-focussed” search which will return a highly specific signification of the Trade Mark and not the ordinary signification.  Moreover, the Applicant contends that when the Examiner’s search was reproduced, the search in fact returns only 14 results referring to propionic acid bacteria on the first 2 pages and 2 results on the third page.  The other results are for ‘particle-associate bacteria (PAB)’, ‘particle-attached bacteria (PAB)’, the HAS-binding protein PAB, PAB protein domain and phosphate-accumulating bacteria.  Further, the Applicant argues that all of the 16 results are scientific journals and not “references by scientific manufacturers of probiotic goods discussing the benefits of PROPIONIC ACID BACTERIA as probiotics”.  Hence, the Applicant concludes that at best PAB may mean ‘propionic acid bacteria’ to a small part of the international scientific community but to others in the scientific community, the Trade Mark could equally signify ‘particle-associated bacteria’, ‘particle-attached bacteria’, ‘PAB protein domain’ or ‘phosphate-accumulating bacteria’. 

11. It is not possible for examiners to be personally aware of all of the acronyms used in a particular field and it is appropriate for an examiner to conduct research to determine the ordinary signification of a mark for the claimed goods, particularly specialised goods.  It is apparent that the acronym PAB is used to refer to propionic acid bacteria. This is an umbrella term for a group of bacteria with the ability to produce propionic acid and which have physiological and biochemical properties that makes it desirable to include these bacteria in probiotics, supplements and additives for humans and animals, pharmaceuticals, cosmetics, food, beverages and veterinary products.  It appears to be common to abbreviate the name of bacteria. In my view, it is likely that manufacturers of probiotics and other substances containing propionic acid bacteria will be aware of the benefits of incorporating such bacteria in their goods and will know of the acronym PAB as an abbreviation for propionic acid bacteria even if they are not familiar with the scientific articles themselves. 

12. The fact that the Applicant claims to have adopted the Trade Mark as an acronym for ‘Probiotics Australia Bacteria’ does not restrict its ordinary signification to the meaning determined by the Applicant.  A trade mark may have a number of ordinary significations.  In considering the goods claimed by the Applicant, I am satisfied that there is a clear connection between the meaning of the acronym PAB and the Goods.  This meaning is likely to be known to sophisticated consumers who purchase bacteria and goods containing bacteria such as cultured goods, probiotics and supplements.

    Other Traders

13. The next step involves determining whether other traders would legitimately desire to use the Trade Mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of their own good and/or services.

14. The Applicant attests that no similar marks were being used in the marketplace at the time of adoption of the Trade Mark.  The absence of use of the Trade Mark by other parties is not determinative of its inherent adaptation to distinguish the Goods because whether a trade mark is inherently adapted to distinguish the relevant goods or services fundamentally depends on the nature of the trade mark itself.[5]  As Kitto J stated in Clark Equipment Co v Registrar of Trade Marks:[6]

    That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.

    [5] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15, [7] (Gibbs J).

    [6] (1964) 111 CLR 511, 514.

15. As noted above, the Trade Mark is an acronym for propionic acid bacteria which are used in the manufacture of a wide range of goods including probiotics, foods, beverages, pharmaceuticals, veterinary products, supplements and other cultured or fermented goods.  Other traders in the goods claimed by the Applicant are likely to wish to use the Trade Mark, or a mark nearly resembling it, in relation to the Goods.

16. Having considered the presumption of registrability, I am nevertheless satisfied that a ground of rejection exists under s 41(3) for all of the goods claimed except the following class 5 goods for which a ground for rejection exists under s 41(4):

    babies beverages; beverages for medical purposes, including beverages containing added minerals, added trace elements and added vitamins; beverages for infants; chemical products for use in detection or identification of bacteria (medical or veterinary use); dietetic nutrients and substances for medical and veterinary use; dietary supplements, including nutritional supplements for animals and infants; dietary food preparations for medical use (medical food); dietary food supplements; dietary protein supplements; fibre supplements; food supplements; herbal beverages for medicinal purposes; vitamin and mineral preparations; medicated food supplements and beverages; medicated preparations for use as supplements for food and animal feedstuffs; medicinal beverages; medicinal food supplements both for human and animal consumption and including dietary supplements; and nutritional supplements, including for human consumption and animal feed

17. Having found that a ground for rejection exists under ss 41(3) and (4), I will now consider the extent of use of the Trade Mark by the Applicant.

    Evidence of Use

18. The Roux Declaration claims use of the Trade Mark since May 2020.  Hence there was minimal, if any, use of the Trade Mark before the Relevant Date being 27 May 2020.

19. Moreover, most of the evidence shows that the Trade Mark is used as part of the product names and/or product codes on the website, in brochures, quotes and on product labels for example:  Lacticaseibacillus rhamnosus PAB™-LR66.  Consumers are unlikely to recognise PAB being used in this manner as a badge of origin particularly on the product labels where the Trade Mark is only in relation to the bacterial strain in the list of ingredients.  Whilst I consider that some of the other uses of the Trade Mark such as PAB^TM- Feminio Cystitis in a brochure may be recognised as a badge of origin, I am satisfied that considering the minimal extent of use (and lack of any other relevant circumstances) that the Trade Mark does not, and will not, distinguish the Goods as those of the Applicant. 

    Decision

20. Section 33 relevantly 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.
    
    

21. In weighing the evidence of use of the Trade Mark against the extent to which it is inherently adapted to distinguish the Goods, I am satisfied on the balance of probabilities that a ground for rejection exists under s 41. Accordingly, I reject the application.

    Tracey Berger
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    31 May 2022