Re Hans Continental Smallgoods Pty Ltd

[1993] ATMO 52

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Application number 557054 to register a trade mark in the name of Hans Continental Smallgoods Pty Ltd.

Background

On 4 June 1991 the applicant made application in Class 29 to register the trade mark HANS LITE N LOW  in respect of "All goods in Class 29."  Various correspondence has ensued between the applicant's representative and the examiner in which the specification has been amended to read, "Meat, poultry and game; meat products, including salami and sausage meats; preserved dried and cooked fruits and vegetables and frozen vegetables; but excluding baked beans, spaghetti and canned soups and foods specifically intended for infants or young children".  It is my understanding that the exclusion relates to another issue concerning the mark HANS which involved the HEINZ company.  The examiner also requested a disclaimer of the words LITE N LOW.  This consent has not been forthcoming from the applicant who has requested my decision on the written record concerning the need for the disclaimer.  The applicant is represented by Mr C P  Anese of the firm Cullen and Co of Brisbane and, by letter dated 13 April 1993, has waived its rights to be heard.

The Issue
Sub-section 32(1)(b) of the Act states, inter alia:

(1) If a trade mark-

(b) contains matter which is common to the trade or is otherwise not distinctive,

the Registrar [...] in deciding whether the trade mark shall be registered, [...] may, in his [...] discretion, require as a condition that the proprietor shall disclaim any right to the exclusive use of any of those parts, or of that matter, to the exclusive use of which the Registrar [...] holds the proprietor not to be entitled or that the proprietor shall make such other disclaimer as the Registrar [...] considers to be proper for the purpose of defining the rights of the proprietor under the registration.

Mr Anese has not requested the transfer of the application to  Part B of the Register, neither has he submitted any evidence of use on behalf of the applicant.  He submits that the

"... specific expression "LITE N LOW" is not a term which other traders would normally want to use.  As the examiner has indicated, the words "LIGHT" and "LOW" would relate to different characteristics and therefore, the terms would not be used together, nor would they be joined by the letter "N".

"The applicant has already disclaimed exclusive rights in the words LITE and LOW.  Thus other traders would be free to describe their products as being light in fat and low in calories, if they wish.  It is submitted that it is not only unnecessary to disclaim the exact expression "LITE N LOW", but inequitable to the applicant to require it to do so.

"The trade mark of this application is HANS LITE N LOW.  (sic)  Thus, the mark would be used, by way of example, as follows

HANS LITE N LOW salamis.

"It is to be noted that the expression "LITE N LOW" is used to distinguish the salamis of the applicant from those of other traders.  In other words, it is used as a trade mark.  The expression "LITE N LOW" cannot be used in that form in a descriptive sense.  It can only be used in a descriptive sense if the expression is broken up and reformed as, say, "light in fat and low in calories."

Thus, by his submissions, Mr Anese has chosen to address the distinctiveness of the expression per se, not whether the mark has direct reference to the character or quality of the goods - he mentions descriptiveness in parting, but presents it as something that grows out of non-distinctiveness and not, as it truly is, vice versa..  I must state, because by his submissions Mr Anese appears to have misapprehended the situation, what we are considering here is the need for a disclaimer in Part A of the register - not Part B.

The examiner made it quite clear in her report that the disclaimer had been requested because of the descriptiveness of the words and that the non-distinctiveness of the expression grew out of that: this appears to be caught by the words of sub-section 32(1)(b), "contains matter which is common to the trade or is otherwise not distinctive," [...] "or that the proprietor shall make such other disclaimer as the Registrar [...] considers to be proper for the purpose of defining the rights of the proprietor under the registration."

There has been no evidence of use lodged to bring the issue under the ambit of sub-section 24(2) and, by extension, to sub-section 26(2).  Thus, the argument presented by the attorney does not seem to me to be of much relevance: in the absence of evidence of acquired distinctiveness it would seem that the argument presented would only have relevance if the application were in Part B of the Register.  What I am to consider is the issue of the direct reference of the expression LITE N LOW as it represents itself to the ordinary person: not, as Mr Anese would have me do, some abstract balancing of whatever inherent distinctiveness that the expression might have vis-a-vis the requirements of other traders to use it, as against its hinted at but undemonstrated use.  (The latter factors being part of the test under sub-section 26(2)).

Finally, I will note that Mr Anese's submission that the phrase LITE N LOW, rather than HANS LITE N LOW, "is used to distinguish the salamis of the applicant from those of other traders", is entirely without any corroboration whatsoever and flies in the face of the fact that the mark applied for is HANS LITE N LOW.

Direct Reference

In Mark Foy's Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190 (TUB HAPPY), Dixon CJ stated that the test, for direct reference, 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. The ordinary person was considered to be, in Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175, at 184 (ROHOE); and, in Bausch & Lomb Inc v Registrar of Trade Marks (1980) 28 ALR 537, at 542 (SOFLENS), as the person having some interest or expertise in the relevant section of the market.

Additionally, it must be observed that in Keystone Knitting Mills Ltd's Appn (1928) 45 RPC 421 (CHARM), Lord Hanworth stated that a mark should be looked at "not in its strict grammatical significance, but as how it would represent itself to the public at large who are to look at it and to form an opinion as to what it connotes".

Accordingly, I believe that the ordinary person here is the individual who is buying or contemplating the purchase of the applicant's goods.  He or she, being an ordinary Australian would have a knowledge of goods such as salamis and preserved meats and such other things as health, the benefits of a healthy diet, the way goods are marketed and the usual constructions that traders use when they put marks on their goods.

Further, it should be noted that wherever an objection in terms of sub-section 24(1)(d) applies to an English word having direct reference to the character or quality of the goods, such as LIGHT, an objection will apply to its phonetic equivalent such as LITE.  Misspelling is not invention: H N Brock & Co Ltd's Appn (1909) 26 RPC 850 (ORLWOOLA); and, the test, again, falls in the perception of the ordinary person: Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd, supra.

In Registrar of Trade Marks v Muller (1980) 31 ALR 177, at 179, (LESS), the court expressed the question thus:

The question is therefore whether in such phrases as "LESS analgesic" or "LESS aspirin", "LESS" refers directly to the character or quality of the pharmaceutical product with which it is paired.

It seems to us that when it is so linked, LESS does convey something about the character or quality of the product.  Admittedly an additional word such as "used" or "requiring" has to be inserted into the phrase for the meaning to be clear and grammatically complete.  But this is no different from "charm" in relation to "hosiery" (Keystone, supra,) or "health" in relation to "cocoa" (Thorne & Co Ltd v Sandow (1912) 29 RPC 440) which were held to have direct reference to the character or quality of the goods and where link words would have been necessary to make the meaning clear.

Further, I do not think that it is conceivable that the ordinary person, when contemplating the mark, could arrive at any other conclusion than the words LITE N LOW mean, and are intended to signify, LIGHT AND LOW.  There is some suggestion in Mr Anese's submission that the use of the letter N in this way is so unusual that the mark could only be seen as having trade mark significance and that it is, as a consequence, registrable.  However, I believe that a more correct interpretation of the ordinary person's reaction to the mark is that the use of the letter N as a substitute for the word AND is, in this context, quite usual and well understood - it does, in fact, fall into the same genus of consideration as H N Brock & Co Ltd's Appn, (ORLWOOLA), supra.  I further consider that the juxtaposition of the expression LITE N LOW with the word HANS so that it forms the mark HANS LITE N LOW does, if anything, serve to reinforce the descriptive impact of the expression.  It goes, almost without saying, that the mere fact that a mark has been used as a trade mark, and there is no evidence that this one has, does not make it immediately registrable.  Indeed, there are some marks that have extensive evidence of distinctiveness in fact lodged by the applicant and are not registrable.

Accordingly, the question that I am to ask is, does the expression LIGHT (in fat) AND LOW (in cholesterol) (or any other character or quality, such as weight or price) refer directly to the character or quality of the goods with which such an expression is paired?

I think that the inevitable answer is "yes", and that, accordingly, the mark is not registrable in Part A of the register in the absence of the disclaimer that was requested.  There is no authority that I can find to give support to Mr Anese's suggestion that because a mark contains two descriptive words it must be registrable.  In fact, marks such as TIMELESS CREATION, Hawke (Aust.) Ltd's Appn (1988) AIPC 90-525; or, BEST FOR BABY BEST FOR YOU, Johnson & Johnson Pty Ltd's Appn (1962) 36 AOJP 250 show otherwise.

For completeness' sake, I also note that I believe that the mark is not registrable in Part B in the absence of such a disclaimer; and, that even with extensive evidence of use, I consider it unlikely that the requirement for this disclaimer would be waived.

As the applicant has indicated that the disclaimer offered to it twice by the examiner is unacceptable, I refuse the application.

Ian Thompson
A/Hearing Officer
Trade Marks Hearings

9 June 1993