Re: Application number 733227 in the name of Nihon Polyolefins Kabushiki Kaisha

[1998] ATMO 68

TRADE MARKS ACT 1995

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

Re:      Application number 733227 in the name of Nihon Polyolefins Kabushiki Kaisha

to register the trade mark J-ALLOMER

Trade mark application 733227 seeking registration of the sign J-ALLOMER was filed on 28 April 1997.  The applicant is Nihon Polyolefins Kabushiki Kaisha, a Japanese joint-stock company located in Minato-Ku, Tokyo, Japan. Nihon Polyolefins Kabushiki Kaisha (which I shall now refer to as Nihon) applied to register this trade mark for goods in Class 1 specified as “Synthetic resins in this class”.

When the application came to be examined, the examiner of trade marks raised grounds for rejection of the application in terms of section 41. She said that the word ALLOMER, an alternative name for polyallomer, was a term in use in relation to resins and therefore one which other traders were likely to need to use in relation to their similar goods.  She supported this by citing a reference in a current scientific dictionary, the Polymer Science Dictionary (Mark Alger, Chapman & Hall, London, 2^nd Edition), and by providing examples of occurrences of usage from an Internet search. She maintained that combining the single letter J with the word did not, result in a combination which was capable of distinguishing the applicant’s goods because it was not uncommon in the fields of chemistry, or the physical sciences, to identify substances by combining a letter with a descriptive term.  She cited as examples A-stage resin, B-stage resin, C-stage resin and J acid which are terms defined in Hawley’s Condensed Chemical Dictionary.

On the applicant’s request, the trade mark application came to a hearing in Melbourne on 2 June 1998.  The hearing was before me. Mr Chris Sgourakis of the Melbourne attorney firm of Griffith Hack & Co represented the applicant, Nihon.

The law

Section 41 of the Trade Marks Act 1995 deals with trade marks in terms of whether or not they are capable of distinguishing an applicant’s goods or services. This section of the new Act has been judicially considered by Justice Branson in the oregon case Blount Inc v The Registrar of Trade Marks (1998) 40 IPR 498.

Her Honour observes that, in applying the provisions of section 41, and in deciding whether a trade mark is capable of distinguishing, the Registrar has three options.  He or she may 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 distinguishing the designated goods or services.

Justice Branson goes on to outline the consequences of each of these findings.  If the Registrar reaches conclusion (a) he or she must accept the application by reason of subsection 33(1).  If option (b) applies, then the provisions of paragraphs (a) and (b) of subsection 41(6) are brought into operation and the application must be rejected unless the applicant establishes that, because of the extent to which it has used the trade mark before filing the application, the trade mark does distinguish the designated goods.  If the Registrar reaches conclusion (c), then the provisions of paragraphs (a), (b) and (c) of subsection 41(5) are brought into operation. Then, in deciding whether the trade mark does or will distinguish the designated goods, and may therefore be accepted as a trade mark capable of distinguishing the applicant’s goods, the Registrar must take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods, the use, or intended use, of the trade mark by the applicant and any other circumstances which may be relevant. 

On this basis then, the first step in determining the issues of section 41 is to consider the extent to which the trade mark under consideration is inherently adapted to distinguish the designated goods from the goods of other persons.  As Justice Branson confirms in her decision, the expression inherently adapted to distinguish in section 41 has the same significance as it had under the Trade Marks Act 1955.  The meaning of those words was explained in Clark Equipment Company v Registrar of Trade Marks, the MICHIGAN case, 111 CLR 511 and this continues as good precedent under the Trade Marks Act 1995.

In Justice Kitto’s words at p 514:

... the question of 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.

Applying this to the present case, the question is whether the term J-ALLOMER is a term which other traders, actuated only by proper motives, are likely to wish to apply to their own synthetic resins, for the sake of any signification ordinarily conveyed by that term.

Discussion and submissions

The word allomer has a presence in modern dictionaries where it is defined as an alternative name for polyallomer. (see Polymer Science Dictionary supra).  Polyallomers are described as a variety of resin which exhibits stereoregular crystalline structure. They are copolymers and their physical properties are generally intermediate between those of the homopolymers of the component resins.  This constancy of crystalline form or structure with a variation in chemical composition is defined as allomerism.  The nominated goods are synthetic resins, and it seems quite clear therefore that the word allomer has a direct reference to these goods.  Occurrences of the word on various sites on the Internet have been found in an online search indicating that the word allomer is currently in use.

The word allomer on its own, then, has a specific meaning in relation to certain synthetic resins. A comparison may be made with the word eutectic which was found to be unregistrable in respect of a range of goods used in the processes of welding, soldering and brazing, because of its technical meaning in relation to those goods (Eutectic Corporation v Registrar of Trade Marks (1980) A.L.R. 211). In that case evidence had been provided which showed that many people in the welding industry were unaware that the word eutectic had a technical meaning and it was in fact recognised by them as a trade mark of the applicant.  However, despite this, Justice Rogers considered the fact that there was no other word to convey the meaning of eutectic as a special property of an alloy, to be “a factor of overwhelming weight” as a result of which the word eutectic was inherently unadapted to distinguish those particular goods. Here the word allomer conveys a special meaning in relation to synthetic polymer resins and the only other word which conveys the same meaning is the word polyallomer of which allomer is an alternative and shorter form. In line with Justice Rogers reasoning, I consider that neither of these words is to any extent inherently adapted to distinguish the designated goods.

However, the subject mark consists of a combination of the technical term allomer with the letter J and the question to ask is whether that combination is one which other persons may need to use in an honest description of their goods.  The letter J has not been shown to have any particular significance in relation to resins, but it is commonplace for letters to be used to indicate an order within a series, or to represent a particular variety or class of goods. Therefore the trade mark J-ALLOMER, taken as a whole, is apt for use by any trader who wishes to refer to a ‘J’ series of polyallomers.

Mr Sgourakis submits that the trade mark J-ALLOMER should not be taken as having direct reference to the character or quality of the designated goods because, he claims, firstly the word allomer is not well-known or utilised by a sufficiently large section of the relevant public, and secondly, the combination J-ALLOMER as a whole is sufficiently distinctive. 

On the currency of the word allomer, Mr Sgourakis referred me to seven dictionaries, five of them chemical or technical dictionaries, which contained no reference to the word allomer.  He suggested that since the word appeared only in the dictionary referred to by the examiner it should not be taken that the word was in common use.  However, I note that the dictionary which does contain a definition of allomer, and its synonym polyallomer, deals with the field of polymer science and is therefore a particularly relevant reference. It is also an up-to-date edition likely to contain entries of terms in current use.  This, taken together with the usage found on the Internet search, leads me to conclude that it is a term currently in use in the field of synthetic resins.

Mr Sgourakis also referred me to Justice Dixon’s comments on direct reference in Mark Foy’s Limited v Davies Coop and Company Limited and Another (the TUB HAPPY case) 90 CLR 109 at p195 where he says that:

The test must lie in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.

However, the ordinary person in this case, is not just another person in the street, it is a person who would be dealing with synthetic resins, and as Mr Sgourakis pointed out to me, these persons could be expected to have a very highly developed understanding of technical terms associated with polymer science.  It is these persons whose knowledge is appropriate to the question of whether the term J-ALLOMER would have any meaning.  From the combined evidence of the dictionary and electronic media data, I think it is clear that these persons would know and understand the word allomer.  It follows that the word would be regarded and used as a description.

In addition to the TUB HAPPY case, it is relevant to note Justice Dixon’s comments in the ROHOE case (Howard Auto-Cultivators Limited v Webb Industries Proprietary Limited 72 CLR 175):

…the meaning of all words is governed by their context and how words are understood depends upon their universe of discourse.  Here the scope of the use of the words is settled by the application for registration, which is in respect of cultivating implements.  In that setting, Rohoe will convey to the mind of a horticulturalist what would never occur to the hearer if, for instance, he were a seaman heaving upon a line.

The scope of the use settled upon in respect of the application to register J-ALLOMER is synthetic resins, and the universe of discourse will be the universe of the specific organic chemists who work in the industry.  For these specialised products they represent, in Justice Dixon’s words, “the section of the community following a particular pursuit or possessing special vocational or technical interests” whose understanding of the term J-ALLOMER is relevant.

I consider that persons in the chemical, plastics and resins trades will recognise and understand the term J-ALLOMER as indicating a polyallomer with a code reference ‘J’, that is a ‘J’ series of polyallomers. Mr Sgourakis submitted that in an industry as sophisticated as the plastics resin industry, it does not require much, in terms of distinguishing features, to personalise products and distinguish them from other traders.  However, there is nothing before me to suggest that the combination of the single letter J with the descriptive term allomer will lead these persons to recognise the term J-ALLOMER as a badge of origin for synthetic resins and not simply a reference to a particular type or series of polyallomers. 

However, as the letter J appears to have no particular significance so far as resins are concerned, I consider that the mark as a whole does exhibit a minor degree of inherent adaptation to distinguish the designated goods.  In applying the provisions of section 41, I find, therefore, that J-ALLOMER is a trade mark which falls within Justice Branson’s third category of trade marks, referred to above.  This brings it within the provisions of subsection 41(5).  Following the hearing I gave the applicant an opportunity to file evidence of use or other circumstances that I might take into account in deciding whether the mark is capable of distinguishing the applicant’s synthetic resins. I pointed out that I consider the degree to which the subject trade mark is inherently adapted to distinguish is only marginal but I would take into account any overseas use, any expert evidence bearing in the relevance of the word allomer in the Australian chemical industry, and any local use, which might establish the mark under paragraph 41(5)(b).  No evidence has been filed to support the application.

Decision

I agree with the examiner of this application that the word allomer is a technical term used in the field of synthetic polymer resins.  I also agree that in the field of chemistry it is not uncommon to identify particular substances by combining a letter with a descriptive designation.  Therefore I find the term J-ALLOMER is one which other persons who manufacture or sell synthetic resins may wish to use as an honest description of their goods.  Because the letter J does not have a specific meaning in relation to the designated goods, I find that the combination J-ALLOMER is to some extent adapted to distinguish but the degree of that adaptation is not sufficient for me to decide, on that basis alone, that the mark is capable of distinguishing the designated goods.

This conclusion brings the provisions of subsection 41(5) into operation.  The applicant has produced no evidence which I might consider in terms of paragraph 41(5)(a).   In accordance with the provisions of subsection 41(2), I therefore reject this application to register this trade mark.

Helen R. Hardie
Deputy Registrar

23 December 1998