Re Arnott's Biscuits Limited

[1998] ATMO 29

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,

WITH REASONS

Re:      Trade mark application number 617590 in the name of ARNOTT’S          BISCUITS LIMITED

Background

Application number 617590 was filed on 2 December 1993, in the name of Arnott’s Biscuits Limited (the applicant).  It sought registration of a trade mark consisting of the words MINT SLICE in respect of “biscuits, cookies and crackers”, which are goods in class 30.

In the first report issued under the Trade Marks Act 1955, the examiner raised an objection to registration of the applicant’s trade mark in terms of paragraphs (c), (d) and (e) of subsection 24(1) on the grounds that the words MINT SLICE referred directly to the character or quality of the goods by describing them as mint-flavoured biscuits and cookies in the form of, or resembling slices. Upon filing evidence of use of the mark, the application was considered under the provisions of section 41 of the Trade Marks Act 1995, which had come into force on 1 January 1996.  In a further report, the examiner restated the grounds for objection in terms of subsection 41(6), maintaining that, whilst acknowledging long, continuous and substantial use of the mark, the evidence showed the mark to be always displayed in close proximity to the word ARNOTT’S, therefore the applicant needed to demonstrate that the words MINT SLICE on their own had come to be recognised as a trade mark.  In response, the applicant filed survey evidence.  Subsequently, two reports were issued, directing the applicant’s attention to packets of biscuits produced by other manufacturers under trade marks which included the words MINT SLICE and commenting adversely on the survey. 

The applicant’s attorneys sought a hearing on the matter, which was held in Canberra.  At the hearing, the applicant was represented by Mr David Wilson of then the firm Shelston Waters (now Baldwin Shelston Waters), patent and trade mark attorneys of Sydney.   

Submissions

In taking me through the applicant’s evidence, Mr Wilson pointed to the first use of the mark in early 1960, to the manner in which the mark evolved from CHOCOLATE PEPPERMINT SLICE to MINT SLICE simpliciter, and to the prominence of the words MINT SLICE which, he submitted, stood very much on their own as the trade mark identifying the applicant’s product.  He said that the survey conducted by a professional survey organization was part of an omnibus survey concerning a number of issues, and that the respondents were not made aware of any questions being asked on behalf of the applicant.  Although the survey did not involve the trade as such, in Mr Wilson’s opinion members of the trade should be more familiar with the applicant’s mark than the public, as they would be responsible for obtaining stocks of the product. 

Mr Wilson submitted that the recent appearance of other manufacturers’ packets of biscuits with the marks containing the words MINT SLICE, which had been raised by an examiner in a further report, should not have any bearing on the applicant’s entitlement to registration of a well recognised mark with a long history of use.  The fact that there may be a few generic products, presumably copy-cat products, to trade on the applicant’s reputation should not count against the applicant, he said.  The whole purpose of registering a trade mark was to enable a party that has acquired a reputation, long use and a wide public recognition to be able to prevent others from trading unfairly on that reputation. 

In submitting that the applicant’s mark met the criteria of subsection 41(5), Mr Wilson said that, although the word “slice” referred to a certain kind of a biscuit product, or a home-based product, the applicant’s goods were not slices in that sense of the word, and therefore the word was not the name of the product.  Possibly, under the provisions of section 24 of the repealed Act, the word “slice” would not have been sufficiently far from a direct description to qualify for registration in Part A of the Register, he said, but, because the product to which the mark is applied is not a slice, the word was not one without a capacity to distinguish.  The product was not cooked in a slab and then cut up, therefore it had at least some inherent capacity to distinguish.  If it were held necessary to exclude something made in a slab and cut into rectangular portions from the statement of goods, an appropriate amendment could be considered by the applicant, Mr Wilson said. 

Should I decide that the mark did not have the capacity to distinguish, then the evidence was sufficient for acceptance of the mark under subsection 41(6), Mr Wilson submitted.  He reiterated that the generic products had not been shown to have existed at any time prior to the filing date, or prior to the date of the survey.  The appearance of some generic products after the date of the application and after the date of the evidence should not be a reason to presume against the applicant.  If the application were accepted, Mr Wilson pointed out, then it would be possible for the supermarkets selling the generic products to challenge the entitlement to registration, and, if it was believed to be unfair to the manufacturers of the generic products to register the subject mark, then those parties were the only ones in a position to adduce evidence which might weigh against the applicant. 

Having heard the matter, I advised Mr Wilson that I would reserve my decision.  In a letter of 24 March 1998, I informed the applicant that I must reject the application by briefly setting out the reasons for doing so.  I indicated that the applicant may seek detailed reasons for my decision, in accordance with regulation 21.20.  I have been requested to issue such a decision. 

Decision

The task before me is to decide whether the applicant’s trade mark is capable of distinguishing the designated goods under the provisions of section 41 of the Act. In a recent Federal Court decision, Blount Inc v The Registrar of Trade Marks, unreported, [1998] 440 FCA (1 May 1998), Branson J explained the operation of section 41 as follows:

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 in accordance with the Act, or that there are grounds, independent or 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 first step, as directed by Branson J, is to determine the extent to which the subject trade mark is inherently adapted to distinguish the designated goods from those of other persons, pursuant to subsection 41(3).  The phrase “inherently adapted to distinguish”, her Honour says, may be interpreted in light of the decisions under the Trade Marks Act 1955, and United Kingdom legislation which concerns inherent adaptability.  For the criteria to be applied for ascertaining whether a mark is adapted to distinguish, Branson J refers to the established test set out in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, at 514:

[I]t is to insist that the question whether a mark is adapted to distinguish 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.

It was argued at the hearing that the applicant’s biscuits are not slices in the sense of the word defined in The Macquarie Dictionary: “any of several cakes or biscuits cooked or formed as a thin slab and cut in rectangular pieces”, and therefore the mark MINT SLICE is to some extent inherently adapted to distinguish.  In the same dictionary, however, the word is also listed as “1. a thin, broad, flat piece cut from something”; “2. a part; portion”, which ascribes the word a wider definition.   The word “slice” therefore would not merely refer to a rectangular piece of biscuit normally associated with home cooking or small bakery products, but, coupled with the word “mint”, the mark MINT SLICE would also describe the applicant’s goods in broader terms as mint-flavoured portions or mint-flavoured thin, flat pieces, without necessarily specifying the shape of the product.  Seen in that context, it seems me that the applicant’s mark is to no extent inherently adapted to distinguish the designated goods, because the words are likely to be required by others for the purpose of describing biscuits and cookies in the same descriptive manner.  Having found so, according to the directive by Branson J, I must then assess the mark in light of the provisions of subsection 41(6). 

The evidence in support of the application comprises a statutory declaration by Peter Lawrence Moroney, the treasurer and assistant company secretary of the applicant company, together with exhibits PLM-1 to PLM-16, and a survey by a professional market research organisation.  According to Mr Moroney’s statements, the product under the trade mark MINT SLICE was first used by the applicant’s predecessor in early 1960.  A short time before 1960, it had been sold under the name CHOCOLATE PEPPERMINT SLICE, which in early 1960 was changed to CHOCOLATE MINT SLICE and, by mind 1960’s, the product was known as MINT SLICE.  The copies of the advertisements and packets of biscuits in Mr Moroney’s exhibits, which illustrate these changes, also show the words MINT SLICE as invariably appearing on the product together with the applicant’s house mark ARNOTT’S.  Given the relatively low cost of a packet of biscuits, the sales figures representing the product featuring the words MINT SLICE, which amount to $6.6 million for the years from 1989 to 1993, demonstrate a high turnover of the goods before registration of the mark was sought.  No separate advertising expenditure for the MINT SLICE product has been made available, the product being promoted as one of the applicant’s range of chocolate biscuits, the total expenditure for the same period reaching $7.5 million.

The purpose of the survey, which was conducted by telephone in October 1996 by interviewing a total of 1200 respondents in all the states of Australia, is to show that 53% of Australian adults are not only aware of the applicant’s product marketed under MINT SLICE, but they are also able to identify the product with the applicant, that, of the respondents familiar with the product, 69% recognised the applicant as the manufacturer and that, of those who were aware of the trade mark and chose to say they knew which company manufactured the product, 91% recognised the applicant as the manufacturer of MINT SLICE.  It is noted, however, that 7% of the persons associated the product with two other manufacturers.

In order to establish that the subject trade mark, MINT SLICE, is capable of distinguishing the designated goods, the applicant would need to show that, at the date of the application, 2 December 1993, it was recognised as a separate trade mark without the trade mark ARNOTT’S, that it has enjoyed reputation to such an extent that, to the members of the relevant purchasing public the words comprising the mark designated exclusively the applicant’s biscuits and cookies and, that the words had lost their primary meaning by acquiring a secondary significance, that of a distinctive trade mark.  I am not persuaded that the applicant’s evidence has satisfied these requirements.   

Whilst I concede that the applicant’s trade mark has been used successfully and extensively for a very long period, the evidence presented does not convince me that the term MINT SLICE functions as a trade mark in its own right.  In British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, Jacob J stated, at 286, that mere evidence of use of a highly descriptive word was not sufficient to establish distinctiveness of the word of one particular trader, particularly if the mark was used in conjunction with a distinctive and well-recognised trade mark. At p 302, his Honour has pronounced the following caution:

It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader.  This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark. 

The applicant’ survey evidence, which endeavours to demonstrate that the words MINT SLICE separately have come to be recognised by members of the buying public as a trade mark, rather than as a description of the goods has, in my opinion, failed to serve its purpose.  While two trade marks comprising words may be used together on products, where one of those words is descriptive of the goods, prospective consumers are likely to regard it as a mere description; in the present case, as a variety of a range of biscuits of a certain flavour produced by the biscuit manufacturer Arnott.  The survey reveals that a certain number of persons selected to be questioned know of the MINT SLICE biscuits and are able to identify the applicant as the producer of those goods, but it remains silent as to whether the words MINT SLICE solus have impressed those persons as a trade mark.  In addition, it suffers from a further defect in that, having been carried out almost three years after the date of the application, it is not certain that the survey reflects the true situation existing at the time of filing the application. 

In The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125, commenting on the nature of a distinctive word, Lord Russell of Killowen stated, at 145:

... this is far from establishing the required meaning of distinctiveness, which must carry with it the feature that the goods distinguished are the goods manufactured by a particular persons and by no other.  A word or words to be really distinctive of a person’s goods must generally speaking be incapable of application to the goods of anyone else.

It has been submitted that the small percentage of the survey respondents who took the product bearing the words MINT SLICE to originate from other sources than the applicant, had done so in error, or were simply guessing.  In the absence of any documentation to verify whether that might be the case, I cannot ignore this information.  It has also come to light, as reported by the examiner on 11 September 1997, that the words CHOC MINT SLICE appear together with two different registered trade marks on packets of chocolate biscuits sold in supermarkets.  Whilst, in responding to Mr Wilson’s assertion in relation to the matter, I acknowledge that I cannot give this material full weight, it having emerged after the relevant date, nonetheless, I believe it further clouds the contention that the words MINT SLICE are associated with the applicant to the exclusion of all other persons. 

In Blount Inc v The Registrar, supra, Branson J said:

The Act appears plainly to disclose an intention that it should no longer be the case that a trade mark which is “100 per cent distinctive in fact” should not be able to achieve registration (as to the expression “100 per cent distinctive in fact” see  Oxford University Press Case [17 IPR 509] per Lockhart J at 511 and Gummow J at 523). This is confirmed by recommendation 4B of the report of the Working Party... .

In deciding that, in light of the applicant’s evidence placed before the Court, the applicant’s trade mark was capable of distinguishing certain goods under paragraph (a) of subsection 41(6), her Honour took into account the mark’s long and extensive use, promotional material as well as affidavit evidence from members in the relevant trade.  While conceding some deficiencies in the affidavits, her Honour was satisfied that the affidavits, when read as a whole, made it clear that the deponents identified the mark in suit as a range or brand of products of a particular supplier, the applicant, and that several of them had stated that, from their experience, consumers in the relevant industry used the mark to refer to a particular range of goods. 

The present applicant’s evidence, on the other hand, falls short of establishing that no other trader has, or would be likely to desire to use the words MINT SLICE on their own in order to designate their particular goods, and that virtually all the potential purchasers would view those words as possessing trade mark significance, rather than conveying a readily understood ordinary meaning.  In support, I refer to the Full Federal Court case Oxford University v Registrar, supra, where it was found that, despite “100 per cent actual distinctiveness” of the applicant’s mark, to a substantial number of persons the mark did not designate the goods of the applicant. 

Having regard to the foregoing conclusions, the subject mark cannot be taken to be capable of distinguishing the applicant’s goods within the meaning of paragraph 41(6)(a) of the Act.

I find then that I have no option but to reject the above application on the grounds that the applicant’s trade mark is not capable of distinguishing under the provisions of subsection 41(2) of the Act.  Pursuant to the provisions of subsection 33(3), I now reject application number 617590. 

Vija Zars
Hearing Officer
19 June 1998